Delta Patents

EPO publishes unitary patent guide

Delta Patents Patent Law -


The EPO has published the "Unitary Patent Guide. Obtaining, maintaining and managing Unitary Patents".  The document tells how to obtain a unitary patent, e.g., how to apply for unitary effect and what the requirements are. The document also discusses a number of other topics that are relevant for unitary patent proprietors, including the compensation scheme for translations costs and the registering of transfers or licenses.

The document can be downloaded at the EPO. The document looks nice, is well written and seems to be truly useful. Unfortunately,  it will only be really useful once the difficulties surrounding the entry into force have been resolved (see New delay for unitary patent).


Photo by Klimkin from Pixabay under a CC0 license (no changes made).




T 1090/12 - Common general knowledge referred to by a board

Delta Patents Patent Law -


Under what circumstances does common general knowledge require proof? And who has to provide proof: applicants/proprietors, opponents, examining divisions, opposition divisions, and boards of appeal 0 any differences or all alike? Is it required that doubt is substantiated -rather than just asserted- as to its existence before it has to be proven? The Case Law Book (8th edition, July 2016) provides in section I.C.2.8.5 "Proof of common general knowledge": "Where an assertion that something is common general knowledge is challenged, the person making the assertion must provide proof that the subject-matter in question is in fact common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06). In the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact in contention, has to be proved, for instance by documentary or oral evidence (T 939/92, OJ 1996, 309, see also T 766/91, T 1242/04, OJ 2007, 421; T 537/90, T 329/04 and T 811/06). The proof is regularly supplied in citing literature (T 475/88). According to T 766/91 and T 919/97, evidence of general technical knowledge need be submitted only if the latter’s existence is disputed.". In the current case, the board however seems to indicate that the situation is different if the board itself uses common general knowledge to invalidate a claim.

Summary of Facts and Submissions
I. The appeal is directed against the decision of the examining division, dated 6 December 2011, to refuse application No. 02737140.0 for lack of clarity. As "obiter dicta", objections concerning lack of inventive step over D3 in combination with D5 were raised.

[...]

II. A notice of appeal was received on 23 January 2012. The appeal fee was paid on the same day. A statement of grounds of appeal was received on 21 March 2012. The main and the auxiliary request specified in the decision were maintained. Oral proceedings were conditionally requested.

III. In its summons to oral proceedings, the board gave reasons for its preliminary opinion that claim 1 of both requests lacked an inventive step over D3.

IV. In a letter dated 26 May 2017, the appellant filed a second auxiliary request.

V. Oral proceedings were held on 29 June 2017. At the end of the oral proceedings, the board announced its decision.

VI. The appellant requests (see letter dated 26 May 2017, section 6) that the decision under appeal be set aside and that a European patent be granted on the basis of the main request, filed 17 June 2009, or on the basis of the first auxiliary request, filed 4 October 2011, or on the basis of the second auxiliary request, filed 26 May 2017.

The appellant further requested the referral of two questions to the Enlarged Board of Appeal.

The further application documents are: description pages 3-68 as originally filed, pages 1, 2, 2a filed on 8 February 2006; drawing sheets 1-5, 7-13 as originally filed, and sheet 6 filed on 28 October 2011.

VII. Claim 1 of the main request reads as follows:

"1. A system for allowing a client application (212, 260) to access a service at a server (214, 215), wherein the server includes a server engine (201) that provides access to the service via an interface (216, 217), the system characterised by: [...]"

VIII. Claim 1 of the first auxiliary request reads as follows:

"1. A system for allowing a client application (212, 260) to access a service at a server (214,215), wherein the server includes a server engine (201) that provides access to the service via an interface (216,217), the system characterised by: [...]"

IX. Claim 1 of the second auxiliary request reads as follows:

"1. A system for allowing a client application (212, 260) to access a service at a server (214,215), wherein the server includes a server engine (201) that provides access to the service via an interface (216, 217), the system characterised by: [...]."

Reasons for the Decision

1. Summary of the invention

The application relates to a piece of software called a "plugin framework" (see original description para-graph [15], first sentence; abbreviated PIF, see [73], fourth sentence and [32], second sentence) on a single computer (e.g. an e-commerce server, [8]). In the PIF, a so-called "(application) server engine" program 201 allows dynamic customisation of software interfaces by extending the PIF through plugin software modules ([15], first sentence; figure 3: 201, 216, 217). In this context, "dynamic" means "at runtime" ([37], last sentence; original claims 3 and 12). The PIF contains two kinds of software components, the client components (called "client application (212,260)" in the claims, "caller 260" in figure 6, "Applications 206" in figure 2 or "client applications 206" in [32], sixth sentence) and the server components (called "server (214, 215)" in the claims, "Server (Provider) A/B 214/215" in figure 3). A client component invokes a service provided by a server component through an interface 216/217 ([36]; figure 3).

An interface is a data type such as, for example, a "struct" in the C programming language or an array where each element of the data structure is a function pointer (i.e. an address of a C function procedure) pointing to a plugin function implementing the service ([38], first sentence; [75], second sentence; [31], page 8, lines 15-17). The interface must be registered and "realized" in the PIF ([38], second sentence). After the registration of interface implementations (which are, for example, contained in a DLL file) in the framework registry ([69]), a client application component makes a request to the PIF to "realizing" the interface by calling the _e_pif_realize routine ([70], sentences 1-3; [73], fourth sentence; [74], fifth sentence and figure 6: call 266 of _e_pif_realize). This call results in the client receiving a pointer to the desired implementation, which it uses to "retrieve" the implementation (i.e. the DLL) into its local memory ([73], fifth sentence; figure 5: 256 "Load Implemen­tation Code into Client Memory"; see also claim 1 of the current main request, lines 18-19). This "retrieving the implementation into local memory" during the realization process is also designated as "loading it [meaning the implementation] into the caller's address space" ([38], fourth sentence; see also claim 1 of the main request, lines 11-12). After the realization, the client application can invoke the functions in the implementation DLL ([38], third sentence).

2. Overview of the present decision

2.1 The clarity objections in the first instance decision (18.1-18.2) are unjustified.

2.2 The board does not remit the case to the department of first instance (Article 111(1) EPC 1973).

2.3 Claim 1 of all requests lacks an inventive step (Article 56 EPC 1973).

2.4 The board does not refer either of the two questions submitted by the appellant to the Enlarged Board of Appeal (Article 112(1)(a) EPC 1973).

3. Clarity

3.1 Apparently, most of the clarity objections in the decision (18.1-18.2) stem from the fact that the decision assumes that the "client application" and the "server" of the claims interact over a network, i.e. that they run in a client-server (hardware) architecture.

[...]

3.6 Therefore, the clarity objections in the decision are unjustified (Article 84 EPC 1973). Consequently, the appeal is allowable in the sense that the reasons of the decision do not justify a refusal of the application. On the other hand, the examination of the application has to be continued, because in the first instance there was no decision on the patentability of the claimed subject-matter.

4. No remittal to the department of first instance

Article 111(1) EPC 1973 reads: "Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution." The appeal is allowable, because the examining division erred in its decision that certain claims of the application lacked clarity (see section 3 supra). Making use of its discretion, the board decides to exercise the power within the competence of the examining division to examine the subject matter of the claims submitted for a decision on appeal. Accordingly, the board will assess whether the subject-matter of claim 1 of each request involves an inventive step. It is true that proceedings before the EPO are designed such that issues may normally be decided by two instances, i.e. an administrative first-instance department and, upon judicial review, by the boards of appeal. However Article 111(1) EPC allows for an exception to this rule. Since the board is conscious of the negative opinion of the examining division on the presence of an inventive step (see "obiter dicta", sections 21 and 22 of the decision under appeal), it would serve no purpose to remit the case. The board is aware that this opinion can only be derived from "obiter dicta" on inventive step and that a decision by the examining division on this subject would have carried greater weight. But, as the argument of the examining division is sufficiently elaborated and clear and the amendments before the board have not brought about substantial changes that would affect the assessment of the case, the board considers that the opinion of the examining division would not be substantially affected by arguments put forward in the appeal proceedings. Consequently, the board decides itself on inventive step.

5. Inventiveness of claim 1 of the second auxiliary request

5.1 In the following, only the second auxiliary request is analysed, since it is more concrete and narrower than the other requests. Therefore, the finding of lack of inventive step relating to the second auxiliary request also applies to the main request and the first auxiliary request.

5.2 Initially, the board noted in its communication sent in preparation for the oral proceedings that several features do not contribute to the presence of an inventive step, since they are merely present somewhere in the claim, but are not referred to elsewhere in the claim. Therefore the board concludes that they do not have any function in the claimed system and therefore do not contribute to inventive step. These features are:

- the "server (214, 215)" (line 2): in the following, only the "server engine" (included by the server) is used; nothing is needed from the remaining server (whatever this might be);

- the registration [of the first implementation] (line 6);

- a plugin module [comprised in the first implementation] (line 10): not used in the following;

- the dynamic linking and loading of the plugin module of the first implementation into the server engine: this first loading of the implementation (lines 9-10), which targets the server engine's address space, seems to be useless, since the client cannot call it from there by inter-process communication, and the same implementation is anyway loaded a second time, namely into the client application's address space (line 11) in which the client application can easily invoke it;

- providing plugin APIs that act as extensions to the interfaces provided by the server engine: not used in the following.

5.3 The essence of the claimed invention can be summarised as follows:

- a client application calls a "realization" function at a server engine in order to invoke the functions of a first implementation;

- in response to the realization request, the server engine locates the first implementation,

- copies a first array of pointers pointing to the implemented functions from the first implementation to a so-called "proxy" array,

- copies pointers from a second array of pointers to the proxy array for a subset of function inherited from a second implementation and

- returns a pointer to the proxy array to the client application;

- furthermore, the first implementation is loaded into the client application's address space and retrieved from the local memory of the client application process.

5.4 Document D3, which has already been selected as closest prior art, in the decision's obiter dictum (21.1) discloses that:

- a client application calls a "realization" function at a server engine in order to invoke the functions of an implementation: see page 56, lines 1-3: "A client instantiates a component instance by calling the COM CoCreateInstance() function and specifying the desired CLSID and IID, ..." - Thus, in D3 the "realization" function is called CoCreateInstance() function, the server engine is called COM runtime system;

- as a response to the realization request, the server engine locates the implementation: implicit, since the server engine/COM runtime system of D3 later on loads the implementation into the client component's address space;

- returns a pointer to the table of pointers pointing to the implementing functions: see page 56, lines 3-5: "... and the COM runtime system returns a pointer to the desired interface." - The interface of D3 is a table of function pointers/Vtable, see page 55, right column, lines 6-9: "It [= COM] implements component interfaces as a table of function pointers, which are called vtables ...";

- the implementation is loaded into the client application's address space/local memory of the client application process: see page 56, fourth paragraph: "For in-process instances, the component implementation is usually held in a dynamically linked library (DLL) and is loaded directly into the process's address space. The vtable then points directly to the component implementation." - The execution context used in the claim is called "in-process" in D3; see page 56, third paragraph: "Under COM, components can be instantiated in three different execution contexts: directly in the application's process (in-process), ..."

5.5 Thus, the claim differs from D3 in that it uses an array as the data structure for representing the table of function pointers and in that it copies the array from the implementation to a so-called "proxy array". Furthermore, function pointers from a second implementation are also copied to the proxy array in order to let the first implementation inherit functions from the second implementation.

5.6 The board cannot identify a technical effect emerging from these differences which goes beyond the usual effects of using arrays, function pointers, copying and inheritance, well-known before the priority date of this application.

5.7 The appellant argued that the invention avoided having to re-program the functions of the second implementation in the first implementation. This allowed the reuse of program code and reduced development time.

5.8 However, this merely eases and accelerates the programming, which is a non-technical activity. Therefore this cannot contribute to the technical character of the invention, and consequently also not to the presence of an inventive step (see also decision T 423/11 of the same board, sections 3.9, 3.11 and 3.12).

5.9 The appellant further argued that the reuse of code reduced the memory consumption.

5.10 This did not convince the board either, since a memory reduction would only occur compared to a hypothetical programming situation in which the programmer chose to first write the code of the functions for one implementation and then again for the other implementation. However, in the system of D3 the programmer would directly write the code of the functions he wanted to use, and this only once.

5.11 Furthermore, if a situation arose in which the programmer - for technical reasons - needed the same function in two different implementations, he would not hesitate to access an existing function implementation by a function pointer, since D3 already uses Vtables and function pointers.

5.12 Therefore, the subject-matter of claim 1 of the second auxiliary request is not inventive (Article 56 EPC 1973).

5.13 As stated above at section 5.1, the same arguments apply to claim 1 of the main request and the first auxiliary request.

6. No referral to the Enlarged Board of Appeal

Referring to the board's statement made in section 5.6, the appellant drew attention to section G VII 3.1 of the Guidelines that reads: "an assertion that something is common general knowledge need only be backed by documentary evidence (for example, a textbook) if this is contested" and submits that this passage is binding on the boards of appeal when exercising the power of the examining division. In the case at hand, the board denied that it was obliged to provide written evidence and explained during the oral proceedings that its members knew from their work on previous cases that the features listed supra were known to the person skilled in the art. It would therefore have been for the appellant to show an error in the board's appreciation, e.g. that one of the features at issue was in fact introduced into the art after the priority date of the application under appeal. The appellant sees in this discrepancy a point of law of fundamental importance for which he seeks clarification and requests the referral of one or both of the following questions to the Enlarged Board of Appeal.

6.1 The first question

"To what extent is a Board of Appeal, when exercising power within the competence of the first instance department which was responsible for the decision appealed under Article 111(1) EPC, subject to the same constraints on that power as the first instance department, such as the duty to follow the Guidelines?"

The board judges that an answer to this question is not required. In order to ensure uniform application of the law, or if a point of law of fundamental importance arises, the board shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes (Article 112(1)(a) EPC). The Guidelines for Examination at the European Patent Office (Version November 2016 - further referred to as the Guidelines) are not part of the European Patent Convention (see Article 164(1) EPC 1973) and therefore cannot be binding upon the members of the boards of appeal (see Article 23(3) EPC 1973). This is acknowledged in the Guidelines on page 5, paragraph 1, that reads:

"It should be noted also that the Guidelines do not constitute legal provisions. For the ultimate authority on practice in the EPO, it is necessary to refer firstly to the European Patent Convention itself including the Implementing Regulations, the Protocol on the Interpretation of Article 69 EPC, the Protocol on Centralisation, the Protocol on Recognition, the Protocol on Privileges and Immunities and the Rules relating to Fees, and secondly to the interpretation put upon the EPC by the Boards of Appeal and the Enlarged Board of Appeal."

6.2 The second question

"To what extent is a board of Appeal, when exercising power within the competence of the first instance department which was responsible for the decision appealed under Article 111(1) EPC, entitled to rely upon an assertion of common general knowledge, such as for interpreting a prior art citation or assessing a technical effect, without providing documentary evidence of such common knowledge, even though the assertion is contested and there is, in effect, no possibility of appeal against such assertion."

The board refuses this request, as the question can be answered by reference to the EPC without doubt (see Case Law of the Boards of Appeal, 8th edition, IV., F., 2.3.7).

Firstly, the board refers to its answer to the first question: there is no obligation on the part of a board of appeal to follow the Guidelines. Secondly, there is also no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case. Doing so may be the most straightforward way to give convincing reasons why, for example, a certain feature was known in the art at the priority date of an application. But it is not the only way. It is also possible for a board to state what it deems to be known, and possibly where it is known from, in a way that puts the appellant in a position to try to convince the board that its findings are erroneous. Proceeding that way respects the party's right to be heard (see for example T 458/07, section 7 and R 20/11, sections 3.1 and 4, last sentence). In analogy to the situation in which documentary state of the art is presented, the appellant has the opportunity to comment on the board's view and provide arguments as to why the facts the board relies on are held to be wrong. A mere denial that such commonly known prior art existed is not sufficient. In its letter of 26 May 2017, the appellant complained that it was not in a position to prove a negative, i.e. what is not known to the skilled person. But that is not what the appellant is supposed to do. He could, for example, have provided evidence of when the contentious array data structure feature was introduced into the art, which the appellant however chose not to do.

Order

For these reasons it is decided that:

The request for referral of questions to the Enlarged Board of

Appeal is refused.

The appeal is dismissed.

This decision T 1090/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T109012.20170629 . The file wrapper can be found here. Photo "Encyclopedias" by Kevin Doncaster obtained via Flickr under CC BY 2.0 license (no changes made).

T 1921/12 Who should sign a 'decision'

Delta Patents Patent Law -

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.
The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   
In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Summary of Facts and Submissions

I. Appellants 01, 02 and 03 (respectively opponents 01, 02 and 03) lodged an appeal against the decision rejecting their oppositions against European patent 1 646 477.

II. The Opposition Division held that none of the grounds of opposition raised and substantiated under Article 100(a) EPC (lack of novelty, lack of inventive step, and under Article 100(b) EPC (lack of sufficient disclosure) held against the patent. It considered that the wording of the claims , as corrected by the Examining Division under Rules 139 and 140 EPC, was the valid version of the claims.

III. The present decision is based on the following documents mentioned, among others, during the opposition proceedings: [...]

IV. The statements setting out the grounds of appeal and the replies thereto of the respondents contain a large number of requests.

In the annex to the summons for oral proceedings the Board presented its preliminary opinion on these requests of the parties, stating inter alia that:

There was a deficiency in the first instance proceedings because of the correction requested by the respondents with letter of 15 November 2010, which had been incorrectly allowed by the Examining Division under Rule 139 EPC. The main issue in this correction was the addition of "or less" after "0,25 microns" in claim 1. In fact there was no decision of the Examining Division, since it had been taken by only one member of that division. In view of this evidence (which was sent to the parties) and the particular circumstances, however, the Board could deal with this issue itself without remittal to the Opposition Division, nor need the appeal fee be reimbursed.


The main request, as well as the auxiliary requests and the fall-back request of 18 May 2012 could not be allowed, because their respective claims 1 contravened the requirements of Article 123(2) and (3) EPC and Rule 139 EPC as they extended to input stage planetary gearboxes having teeth that had been superfinished to a final surface roughness (Ra) of 0,25 microns or less.

The request to maintain the patent as granted could also not be allowed, due to the subject-matter of its claim 1 lacking novelty over D4 and inventive step over the combination of the teachings of documents D1 and D2.

As the preliminary position of the Board on priority of claim 1 corresponded to the position taken by the Opposition Division, remittal of the case, as requested by the respondents, was also not envisaged.

The arguments of the appellants supporting their objections concerning lack of sufficient disclosure were considered not convincing.

V. With letter of 23 September 2016 the respondents maintained their main request of maintenance of the patent in the form upheld by the Opposition Division, or as granted. They replaced all the previously submitted auxiliary requests with 6 new auxiliary requests for claim 1, 3 new auxiliary requests for claim 6 and 5 new auxiliary requests for claim 9, together with an amended fall-back request. They objected to the Board showing with non-public evidence the non-existence of the correction decision by the Examining Division. It was requested to hear the remaining members of the latter and the chair of the Opposition Division. In this respect the respondents submitted two questions of law and requested that if neither the case was remitted to the Opposition Division, nor the requested corrections were allowed, they be referred to the Enlarged Board of Appeal.

The following document, related to inventive step over the combination of the teachings of documents D1 and D2, was also submitted:

R15: Saint Gobain v Fusion Provida Ltd, Case No: A3/2004/2441.

VI. Oral proceedings before the Board were held on 26 October 2016. Although having been duly summoned, appellant 02 did not attend, as announced with letter of 5 October 2016. According to Rule 115(2) EPC and Article 15(3) RPBA, proceedings were continued without that party.

At the start of and during oral proceedings the respondents requested, as a main request, that the patent be maintained as granted according to the "Druckexemplar", and filed a first auxiliary request for maintenance as corrected. In view of the main request, the issue of the correction decision of the Examining Division was deferred. In regard of the outcome of the discussion on the main request (no inventive step over D1 and D2) the first auxiliary request was withdrawn and replaced by a (new) first auxiliary request. The respondents also requested that Mr. Summers be heard by the Board.

For the further course of the oral proceedings, in particular the parties' initial requests and the issues discussed with the parties, reference is made to the minutes.

VII. At the end of the oral proceedings the parties' final requests were established to be as follows:

Appellants 01 and 03 (appellant 02 in his written submissions) requested that the decision under appeal be set aside and that the patent be revoked.

The respondents requested that the case be remitted to the Opposition Division for prosecution in the event that documents A8 to A10 were admitted into the proceedings, that the appeals be dismissed, i.e. that the patent be maintained as granted on the basis of the "Druckexemplar" or, in the alternative, that the patent be maintained in amended form on the basis of the set of claims filed during the oral proceedings as (new) first auxiliary request with the claims thereof to be renumbered.

All other initial requests were not maintained by the parties.

The present decision was announced at the end of oral proceedings.

VIII. The text of independent claim 1 of the main request, corresponding to the patent as granted according to the Druckexemplar, is as follows:

"An input stage planetary gearbox for a large wind turbine generator comprising a hollow wheel gear, two or more planet gears, and a sun gear, wherein one or more of the hollow wheel gear, two or more planet gears, and sun gear comprise a plurality of teeth that have been superfinished to a final surface roughness of 0,25 microns."

The text of independent claim 9 of the main request is as follows:

"A method for reducing lubricant debris in an input stage planetary gearbox for a large wind turbine generator, wherein the planetary gearbox comprises a hollow wheel gear, two or more planet gears, and a sun gear, the method comprising superfinishing the teeth of one or more of the hollow wheel gear, two or more planet gears, and sun gear to a surface roughness of 0,25 mym or less before operating the planetary gearbox."

The text of independent claim 1 of the (new) first auxiliary request is as follows (amendments over claim 1 of the main request are, respectively, in bold or struck out, emphasis added by the Board):

"An input stage planetary gearbox for a large wind turbine generator comprising a hollow wheel gear, two or more planet gears, and a sun gear[deleted: , wherein one or more of the hollow wheel gear , two or more planet gears, and sun gear], wherein all of the teeth of all of the gears [deleted: comprise a plurality of teeth that] have been superfinished to a final surface roughness (Ra) of 0,25 microns"

The text of independent claim 9 of the (new) first auxiliary request is as follows (amendments over claim 9 of the main request are, respectively, in bold or struck out, emphasis added by the Board):

"A method for reducing or eliminating damage to the bearings of [deleted: lubricant debris in] an input stage planetary gearbox for a large wind turbine generator, by reducing lubricant debris generated from the gear teeth, wherein the planetary gearbox comprises a hollow wheel gear, two or more planet gears, and a sun gear, the method comprising superfinishing the teeth of one or more of the hollow wheel gear, two or more planet gears, and sun gear to a surface roughness of (Ra) 0,25 [deleted: mym] microns or less before operating the planetary gearbox."

IX. The appellants argued, insofar as relevant to the present decision, substantially as follows.

The Opposition Division wrongly delegated to the Examining Division its responsibility to decide on the correction requested by the respondents under Rule 139 EPC. The Examining Division was not competent to deal with this request because examination proceedings were not pending. It also wrongly applied the requirements of Rule 139 EPC.

The decision under appeal is insufficiently reasoned on the issues of sufficiency of disclosure, priority, novelty and inventive step. The decision also does not contain any discussion on the expert statements submitted in relation to the knowledge of a person skilled in the art, said aspect having been extensively discussed during the oral proceedings before the Opposition Division.

As acknowledged in the decision under appeal, D1 discloses a gearbox from which the subject-matter of claim 1 of the main request only differs in the claimed value of surface roughness of the teeth of the gears.

This gearbox is a suitable starting point to discuss inventive step, especially because D1 contains a statement according to which smooth gear surfaces improve the micro-pitting resistance and therefore also the gearbox performance.

This effect is also mentioned in the description of the patent in suit.

The problem to be solved can be formulated as how to avoid micro-pitting in large gears used in input stage planetary gearboxes for large wind turbine generators.

Based on this problem the relevant person skilled in the art can only be identified as a gear design specialist, and not necessarily a wind turbine generator designer.

D2 teaches that smoothing the surface of the teeth of gears to a surface quality of 0,127 to 0,254 microns ([10], [22], "5 to 10 micro-inch") overcomes the problem of micro-pitting.

The decision under appeal was based on the wrong assumption that the person skilled in the art, starting from D1, would disregard this teaching as it is not specifically related to the field of large input stage planetary gearboxes for large wind turbine generators.

The knowledge of the skilled person in this technical field should, however, be properly appreciated on the basis of documents A8-A10, which should be admitted.

The circumstances alleged in R12, to show that at the time the invention was made nobody considered that such large gears could indeed be superfinished, are not described in detail. Therefore the reasons leading to the refusal by Sparleck GmbH to smooth the surfaces of large gears are only partially known.

As a consequence, this declaration cannot prove that the skilled person would generally refrain from superfinishing large gears used in slow speed planetary gear boxes.

A8 explicitly mentions wind turbine generators, and shows (figure 4 at page 4) that superfinishing of large gears was possible (and advantageous) before the priority date of the patent in suit.

The respondents cannot be surprised by the contents of A8, because the author of A8 is also the inventor of the patent in suit.

A8 is prima facie relevant and proves that the skilled person had the necessary knowledge to superfinish large gears, as taught by D2.

Documents A9 and A10 are also prima facie relevant because they show that according to a well known design procedure (FVA 54) for preventing micro-pitting, the parameter Ra is to be kept at 0,25 microns or less.

A8, A9 and A10 have been submitted with the statement setting out the grounds of appeal to confirm the information that would have been provided by the experts during the opposition proceedings, had they been allowed to speak. Therefore they show that the Opposition Division based its decision on an incorrect assessment of the knowledge of a skilled person.

These documents should therefore be admitted into the appeal proceedings.

R6 to R9, submitted by the respondents as a reaction to A8-A10, are not prima facie relevant and should not be admitted. At the oral proceedings, that request for not admitting documents was specifically directed to R7-R9.

The request to hear Mr. Summers on what was actually the situation in A8 should not be allowed, as it is very late filed and causes a delay of the proceedings, since its preparation for it would only be possible with an adjournment of the oral proceedings.

The subject-matter of claims 1 and 9 of the (new) first auxiliary request clearly does not involve inventive step over the combination of the teachings of documents D1 and D2. This request should therefore not be admitted into the proceedings as it not clearly allowable.

The ratio decidendi of G 2/88 (OJ EPO 1990, 93) is not directly applicable to claim 9 of this first auxiliary request, as G 2/88 relates to a change into a second (non-medical) use claim of a substance, and claim 9 rather relates to a process for producing an improved gearbox characterised by superfinishing the teeth of the gears wherein the purpose of carrying out said process steps is indicated in the claim.

X. The respondents argued, insofar as relevant to the present decision, substantially as follows:

The minutes of the oral proceedings before the Opposition Division show that appellant 01 contested extensively the right of the Examining Division to decide upon the request of correction, and Dr. Krull, the expert brought by appellant 03, was allowed to speak. The right to be heard was therefore not denied.

The decision under appeal is sufficiently reasoned on the mentioned issues, as it enabled the appellants to follow all their lines of argument, and argue before the Board that some of them were based on misjudgements of the Opposition Division.

The request for correction under Rule 139 EPC has been correctly dealt with and allowed by the Examining Division following T 226/02, because at that time neither the Opposition Division nor the Examining Division were bound by G 1/10 (OJ EPO 2013, 194).

A8, A9 and A10 have been filed late without any explanation for their delay, and the criteria for admission are not satisfied, as they are not prima facie relevant.

A8 neither refers to gearboxes for wind power generators, nor to gearboxes for low speed applications, such as in an input stage planetary gearbox.

Figure 4 of A8 relates to a superfinishing experiment on large gears which did not produce satisfying results, and does not therefore represent an enabling disclosure which could be relied upon by the skilled person, who is a specialist in the field of large wind turbine generators.

Mr. Summers should be heard by the Board to allow the respondents to confirm that.

R7 to R9 have been submitted as a reply to the issues raised by A8-A10, and in particular to show why they are not relevant, and should be therefore introduced into the proceedings and discussed, if A8-A10 are admitted into appeal proceedings.

D1 discloses a gearbox from which the subject-matter of claim 1 of the main request only differs in the claimed value of surface roughness of the gear teeth.

However, D1 being only a recommendation from AGMA and not a standard, would not be considered by the skilled person as a reliable starting point to discuss inventive step.

The effect of the only distinguishing feature is that the presence in the lubricant of debris coming from the teeth is reduced. This prolongs the life of the bearings, which are lubricated by the same lubricant as the gears in the planetary gearbox.

Based on this effect, the problem to be solved should be formulated as how to improve the service life of the bearings in the known planetary gearbox.

This is because, as R6 clearly shows, at the effective date of the patent in suit the skilled person was very concerned with the failure of bearings, as these components were particularly problematic, and did not consider failure of the gears and the gearbox because of micro-pitting on the gear tooth surfaces as an equivalently problematic issue.

Based on this problem the person skilled in the art cannot be the generic gear designer, as argued by the appellants, but can only be a specialist in the field of large wind turbine generators.

D2 would not be taken into consideration by that skilled person as it relates to gears of any type, even of plastic material, does not mention micro-pitting, and mentions an improved fatigue life of only 100 hours after polishing.

Gears to be used in the technical field of the patent in suit operate with high loads at very low speed, and are therefore not to be compared with gears designed for being used in other technical fields.

A teaching coming from a document which is not directly related to this technical field would not be considered as reliable enough to depart from accepted practice with a reasonable expectation of success.

The approach used by the appellants in the discussion on inventive step is over-simplified, as it does not take account of the principle of expectation of success, as outlined in R15.

It is known (lubricant retention or oil-pocket theory) that excessively smooth surfaces do not retain lubricant. This is because the customary surface roughness values used in this technical field were significantly higher than those which are now claimed.

R12 (declaration of Mr Bruins) shows that before the priority date of the patent in suit not even a specialized company like Sparleck GmbH was able to surface finish the surface of big gear components (above 100 kg) simply because the manufacture of machines suitable for surface finishing of these gears was not possible.

The (new) first auxiliary request should be admitted into the appeal proceedings because its claims are clearly allowable. Clear allowability of claim 9 is, in particular, evident in the light of the ratio decidendi of G 2/88 (supra).

Reasons for the Decision

1. Allegations of procedural violation - insufficient reasoning of the appealed decision

1.1 The appellants argue that the impugned decision is not sufficiently reasoned on the issues of sufficiency of disclosure, priority, novelty and inventive step.

1.2 The Board disagrees and notes that the decision contains under point 1.1 general reasoning on sufficiency of disclosure, related to what the skilled person would make of the wording of the claim and how the objections of the appellants should in fact be seen.

The Board establishes that the reasoning on "reach through" claims is insufficient as it amounts to "we do not agree that these are reach through claims". However, since the minutes do not refer to this argument of appellant 1, it cannot be established whether this argument was presented extensively or only as an allegation at the oral proceedings. In the latter case the simple answer mentioned above is regarded as sufficient.

Concerning the alleged lack of substantiation in the reasoning on priority, novelty and inventive step, the Board establishes that the decision under appeal contains (see points 13 and 14) reasoning on these issues, and notes that the appellants were able to criticize it in detail, and therefore were able to deal with it.

1.3 The appellants also consider the decision as being deficient because it does not contain any discussion on the expert statements submitted by the appellants and related to the knowledge of a person skilled in the art, said aspect having been extensively discussed during the oral proceedings.

1.4 The Board is not in a position to assess whether a procedural violation occurred in this respect, because it is not clearly apparent from the minutes to which extent these issues have actually been discussed.

1.5 Be that as it may, the Board considers that even if one of these procedural violations occurred, no purpose would be served by remitting the case to the Opposition Division, which would at most issue another, maybe better reasoned, decision but to the same effect.

This consideration, combined with the fact that the appellants were able to deal, in their respective statements setting out the grounds of appeal, with the impugned decision in detail constitutes, in the Board's view a special reason for not remitting the case, as allowed under Article 11 RPBA.

The Board therefore decides not to remit the case.

2. Allegation of procedural violation by the Opposition Division in respect of the competence of the Examining Division to decide on the correction of the patent under Rule 139 EPC

Since this question has become moot by the requests having been amended at the oral proceedings, there is no necessity to deal with this issue here. It will be shortly discussed under point 3.

3. Main request (reference to the "Druckexemplar")

3.1 The respondents formulate their main request in that the patent be maintained as granted i.e. in the form according to the "Druckexemplar".

3.2 The appellants note that this does not correspond to the version of the claims with which the patent was maintained when the oppositions were rejected, because that was the version incorrectly accepted by the Examining Division. Based on that they argue that the main request of the respondents amounts to a request to set aside the decision under appeal, which they cannot request as non-appellants.

3.3 The Board disagrees, because it is the order of the impugned decision, which is that the oppositions are rejected, which determines the actual version of the patent that results from the decision. In the present case that is the version as granted, which is indeed the subject-matter of the present main request ("Druckexemplar", see also point 3.5 below).

3.4 This is also not affected by the "Rule 139 EPC correction decision" dated 23 May 2012 which introduced the "or less" into claim 1. This decision was taken by only one member of the Examining Division, as could be established from EPO form 2051 which the Board could retrieve from the non-public part of the file. The parties were provided with a copy of that form.

Such a decision would be, in the opinion of the Board, non-existent. The result would be that the valid version of the patent is the version as granted, as was notified by the Board to the parties with its communication annexed to the summons to oral proceedings.


Since the main request, by its content, made a decision of the Board on this point unnecessary, there was also no need to refer questions related thereto to the Enlarged Board of Appeal.

3.5 There has been another decision dated "22.[deleted: 10]8.2011", also retrievable from the same EPO Form 2051, but this time having been signed by all the three members of the Examining Division, with which they saw the need for correcting printing errors that occurred when the "Druckexemplar" was prepared for printing the granted patent, via Rule 140 EPC, i.e. a correction of their decision to grant.

That was entirely unnecessary because the "Druckexemplar" is in any case the valid version of the granted patent since it is the version communicated to the applicants with the notification pursuant to Rule 71(3) EPC, to which agreement had been given (see also T 995/95, Facts and Submission, point VII; T 1635/10, Reasons, point 1.2; T 809/10, Facts and Submissions, point IX), and to which the decision to grant referred (Article 97(1) and Rule 71a(1) EPC).
Be that as it may, this decision does not affect the wording of the present main request, which is exactly the version of the "Druckexemplar". In any case, the appellants had no objections to this decision of the Examining Division.

3.6 In the issue of the corrections carried out, via the use of EPO Form 2051, on the European Patent after grant, the Board whishes to note that it is rather disturbing that such decisions, more in particular the details of the persons that took them, are not at all retrievable by the public via file inspection. They are not excluded from file inspection pursuant to Article 128(4) EPC and Rule 144(d) EPC, see the Decision of the President of the EPO of 12 July 2007 (OJ EPO 2007, Special Edition, Nr. 3, J.3).

3.7 The main request that the patent be maintained in the form as granted ("Druckexemplar") cannot therefore be considered as a request to set aside the decision under appeal, but is a request to dismiss the appeals.

3.8 For the sake of clarity the Board notes that the text of claim 1 according to the "Druckexemplar" does not contain the modifications requested with the second request for correction, pursuant to Rule 139 EPC ("or less").
4. Admissibility of the documents submitted during the appeal proceedings

4.1 A8-A10

The respondents request that A8-A10 not be admitted as being not prima facie relevant and late filed. The respondents also request, in the case that a positive decision on their admissibility is taken, to remit the case to the Opposition Division to deal with this fresh evidence.

The Board notes that the above question of admissibility raised by the respondents can only be discussed in the light of Article 12(4) RPBA as these documents have not been submitted during the opposition proceedings, but were filed by appellant 03 with its statement setting out the grounds of appeal.

The Board notes that Article 12(4) RPBA mentions "evidence which could have been presented in the first instance proceedings". To the benefit of the party concerned the Board interprets this to mean "should have been presented" (see also T 1689/12, Reasons, point 1.2, T 419/12, Reasons, point 2.1.2).

The question therefore arises whether appellant 03, in the course of opposition proceedings, should have realised that further material needed to be filed.

This is, for the following reasons and as argued by the appellants, not the case.

The appellants argued in the opposition proceedings that there was no prejudice against superfinishing of large gears, more in particular of gearboxes in wind turbine generators, at the priority date of the patent in suit.

Appellant 03 based this on documents A1 to A7 submitted before the Opposition Division, and offered an expert to testify on their content. Appellant 01 used documents D1 and D2 and argued that the skilled person would apply the general teaching of D2 to the gears of input gearboxes in large wind turbine generators.

In its communication annexed to the summons to oral proceedings the Opposition Division rejected documents A1-A7 as not belonging to the prior art and expressed a positive opinion on inventive step over the combination of the teachings of documents D1 and D2. More in particular, the Opposition Division wrote that the skilled person would not do so.

To this appellant 01 replied that it would bring an expert to oral proceedings to support its arguments (appellant 03 had already offered an expert).

At the oral proceedings, these experts (Mr. Krull and Mr. O'Hara) were present.

The minutes do not show that they were allowed to speak. According to appellant 03 his expert (Mr. Krull) was cut short in his submission by the chair of the Opposition Division, who stated that A1 would in any case not be considered prior art. The latter was confirmed by the minutes.

Since the Opposition Division, only at the oral proceedings, did not accept the means of evidence submitted by appellants 01 and 03, the submission of A8-A10 with the statement setting out the grounds of appeal of appellant 03 is regarded by the Board as an acceptable attempt to further support with written evidence the existing line of arguments on the general knowledge of the skilled person and what he would consider as acceptable further teachings.

The Board therefore decides to admit A8-A10 into the appeal proceedings.

The Board also notes that the respondents cannot be surprised by the contents of A8, because the author of A8 is also the inventor of the patent in suit.

A9 and A10 are also not surprising in their respective content, as they relate to a well known gear design procedure.

4.2 R7-R9

The Board also decides to admit these documents, because they have been submitted by the respondents for the case that A8-A10 are admitted by the Board, in application of Article 13(2) RPBA.

The Board notes that the question, raised by the appellants, whether these documents are or are not prima facie relevant does not play a role in this respect.

5. Remittal of the case to the Opposition Division for further prosecution on the basis of documents A8-A10 and R7-R9

The respondents request that the case be remitted to the Opposition Division for further prosecution, as A8-A10 and R7-R9 were not the subject of the appealed decision.

The Board notes that none of A8-A10 has been directly referred to by the appellants in their objections as to patentability of the subject-matter of the claims of the main request and of the first auxiliary request.

The appellants only introduced A8-A10 to support an existing line of argument, namely that the skilled person would not consider that superfinishing of large gears was technically impossible at the priority date of the patent in suit.

As a consequence, the admission of A8-A10 does not raise issues substantially different from those on which the contested decision was based.

The Board also notes that the respondents only introduced R7-R9 to show that a wind turbine specialist aiming at improving the device disclosed in document D1 would not have taken the teaching of document D2 into consideration.

As this is the argument on which point 14.2 of the decision under appeal is in any case based, also the admission of R7-R9 does not raise a different issue either.

As a consequence, the relevant request to remit the case to the Opposition Division for further prosecution is not allowed.

6. Hearing of Mr. Summers

6.1 The respondents alleged, during the oral proceedings held before the Board, that the experiment to which figure 4 of A8 refers did not result in a positive outcome. They argued that the information contained in this document does not represent an enabling disclosure which could be relied upon by a specialist in the field of large wind turbine generators.

The respondents therefore requested that the author of A8, Mr. Summers, be heard to confirm these allegations.

6.2 The Board does not consider it necessary for the present decision to hear Mr. Summers.

This is because it is not at all apparent to a skilled reader that the content of A8 is either not correct or not complete. This document does not contain anything on the basis of which a skilled reader would, at the priority date of the patent in suit, have inferred that the superfinishing experiment on large gears shown in figure 4 at page 4 was not successful.

That this was allegedly the case came up only during the oral proceedings before the Board, and was therefore not public before the priority date of the patent in suit.

According to the established jurisprudence of the Boards of Appeal (see Case Law of the Boards of Appeal, 8th edition 2016, I.D.4.6) the assessment of inventive step is to be made at the effective date of the patent on the basis of the information in the patent together with the common general knowledge available to the skilled person at that date.

A testimony by Mr. Summers could therefore at most disclose something which is post-published.

7. Claim 1 of the main request - Inventive step

7.1 Content of the disclosure of D1

D1 discloses an input stage planetary gearbox (see page 21, point A.5.4, "Gear arrangements", where planetary gear arrangements are disclosed in the fourth and fifth paragraph) for a large wind turbine generator (up to 750 kW, see page 1, point 1, last line) comprising a hollow wheel gear, two or more planet gears, and a sun gear (as it is normally the case with epicyclic gear arrangements), wherein one or more of the hollow wheel gear, two or more planet gears, and sun gear comprise a plurality of teeth that have been finished to a smooth final surface roughness (in fact all teeth, see page 9, point 4.4.5.4).

7.2 D1 as a starting point to discuss inventive step

The Board concurs with the appellants that the wind turbine planetary gearbox disclosed in D1 is a suitable starting point for discussing inventive step, as it discloses most of the features of claim 1 of the main request and is used in an input stage.

The respondents argue that D1, being only a recommendation from AGMA, and not a standard, would not be considered by the skilled person as a reliable starting point.

The Board disagrees: any document that is state of the art under Article 54(2) EPC may be taken into consideration for that purpose, as long as it is a feasible starting point (see e.g. T 21/08, Reasons, point 1.2).

A document which is confidential, or so speculative or obviously defective as to be readily recognised as such by those skilled in the art when trying to reproduce its disclosure cannot be taken as such an appropriate starting point.

The respondents did not, however, provide any reason (and none is apparent to the Board) on the basis of which a skilled person would immediately consider D1 as speculative, unreliable or even confidential, just because its title recites "Recommended Practices for Design and Specification of Gearboxes for Wind Turbine Generator Systems".

7.3 Difference

As agreed by all parties, D1 only fails to disclose one feature of the subject-matter of claim 1, namely that one or more of the gears comprises a plurality of teeth that have been superfinished to a final surface roughness of 0,25 microns.

7.4 Effect - Problem

7.4.1 According to the patent in suit this level of smoothness is sufficient to prevent micro-pitting of the gear surfaces (see paragraph [21]).

Based on this effect, the appellants formulate the problem to be solved as how to improve the functioning, reduce noise and increase the service life of the gears in the known planetary gearbox (see again paragraph [21], top of column 6 and at the end).

7.4.2 The respondents argue that inventive step should only be discussed on the basis of another, different effect mentioned at paragraph [24] of the patent in suit, namely that the presence in the lubricant of debris coming from the teeth surfaces is reduced.

Based on this effect, the problem to be solved should be formulated as how to improve the service life of the bearings in the known planetary gearbox (see again paragraph [24]).

This is because, as clearly acknowledged in the description of the patent in suit (see paragraph [19], lines 42-44, and paragraph [24]) at the effective date of the patent in suit the skilled person was more concerned with the failure of bearings, as these components were considered to be particularly problematic, and would not consider failure of the gears because of micro-pitting on their surfaces to be an issue to deal with.

This is further confirmed by document R6. This document shows that before the priority date of the patent in suit gearboxes were considered to fail mainly because of their bearings (see starting from the first page (53), left column, last line, and right column).

In a technical field in which wind turbine gearboxes were subjected to chronic failure (first page, left column, line 3 of R6) because of their bearings the skilled person would not be really interested in improving the functioning, reduce noise and increase the service life of the gears.

7.4.3 The Board does not concur with the respondents: the reduction of debris coming from the teeth in the lubricant is not the only effect on the basis of which inventive step of claim 1 of the main request may be discussed. Such discussion can take place on the basis of any effect of the established distinguishing features, provided that such an effect is directly derivable from the patent in suit for a skilled person (see Case Law of the Boards of Appeal, supra, I.D.4.4.1).

As the effect of preventing micro-pitting of the gear surfaces is explicitly mentioned in paragraph [21] of the patent in suit, together with the issues of damage of the gear surfaces, vibration and noise, the problems of improving the functioning, reducing the noise and increasing the service life of the gears in the known planetary gearboxes immediately follow. The Board considers that the above approach in the problem formulation is in line with the problem-solution approach, as defined in the jurisprudence of the boards of appeal (see Case Law of the Boards of Appeal, supra, I.D.4.4.1 and I.D.4.4.2).

7.5 Person skilled in the art

The respondents argue that the person skilled in the art should be a designer of components of large wind turbine generators, including gearboxes therefor, and not a specialist in gear design, because the former field is the technical field of the patent in suit.

According to the Case Law of the Boards of Appeal (supra, I.D.8.1.1), the starting point for defining the appropriate skilled person (or group of skilled persons) is not only the technical field of the patent in suit, but also the problem to be solved on the basis of what the prior art (D1 in the present case) already discloses.

The Board therefore agrees with the appellants' position that the person skilled in the art is to be considered as a person with knowledge in the general field of gears and gearboxes, and not only in the narrow field of gearboxes for large wind power generators.

In any case, the Board is convinced that a skilled person as defined by the respondents, once confronted with the problem as defined in point 7.4.3, will refer to the specialist in the field of gear design, because the service life of gears depends heavily on the gear design (see Case Law of the Boards of Appeal, supra, I.D.8.1.2: "Competent skilled person - group of people as skilled person").

7.6 D2 - consideration by the skilled person

7.6.1 The respondents note that according to R6 (see the fourth page, second half of the left column: "Simply Huge") gears to be used in the technical field of the patent in suit operate with high loads at very low speed and cannot be compared with gears designed for use in other technical fields.

D2 covers gears of any type, even of plastic material. It does not mention micro-pitting and mentions an improved fatigue life of only 100 hours after polishing.

They therefore conclude that a skilled person would not take a teaching coming from D2 into consideration.

7.6.2 The Board disagrees.

D2 is a document relating to transmission gears, and deals with the issue of improving their wear resistance (see paragraph [1]).

This document teaches that gears having a final surface roughness of 0,25 microns (within 0,127 and 0,254 microns, or 5 to 10 micro-inches, see paragraph [10]) have improved service life, because the maximum contact stress, as well as the subsurface shear stress are reduced as the result of improved lubrication conditions (see paragraph [11]).

The skilled person, being a gear specialist, and in the light of the objective problem as defined above, has therefore good reason to consider D2 and apply its teaching to the apparatus of D1, especially because he can be expected to take account of solutions to this problem proposed in the same or neighbouring technical fields.

Contrary to what is argued by the respondents, the teaching on surface smoothness is presented in D2 as universally valid (see page 5, line 10: "any metal gear"). There may indeed be an example related to gears having a fatigue life (up to 100 hours, see page 3 lines 50-51), but, as argued by the appellants, the "fatigue life" of a gear, which is expressed in hours under testing conditions, is something quite different in the eyes of a skilled person from the actual "service life" of the apparatus comprising such a gear.

7.6.3 As a consequence of the above, the Board concurs with the appellants that D2 would be taken into consideration by the person skilled in the art.

7.7 D1+D2 - combination of teachings

7.7.1 The respondents argue that the teaching of D2 cannot be applied to superfinishing the surfaces of the teeth of very large gears, like those described in D1.

This is because according to the declaration of Mr. Bruins (R12), before the priority date of the patent in suit not even a specialized company like Sparleck GmbH was able to superfinish the surfaces of large gear components (above 100 kg) simply because the manufacture of machines suitable for these gears was not possible.

7.7.2 The Board disagrees. In the first place because such a declaration is just what it is: it expresses the opinion of one company, not necessarily of the entire group of specialists in the field. Secondly, as argued by the appellants, the reasons leading to this opinion would be, even if all the circumstances alleged by the respondents in relation to R12 would be confirmed, only partially known. It cannot for example be excluded that also commercial reasons played an important role.

This declaration cannot therefore prove that the skilled person would always refrain from superfinishing large gears used in low speed planetary gear boxes, especially because he would, in such a situation, have referred to another specialist, namely an expert in the design of machines suitable for surface finishing of big components (see the Case Law of the Boards of Appeal, supra, I.D.8.1.2: "Competent skilled person - group of people as skilled person").

7.7.3 In addition to that, A8 clearly shows (see figure 4 at page 4) that superfinishing of very large gears (up to 1,2 meter diameter, see page 4, left column, point 1) was presented as possible before the priority date of the patent in suit. This already contradicts the declaration R12.

As already discussed above under point 6, the content of A8 belongs to the state of the art, whereas the information that the disclosure of this document is at least partially not enabling does not.

As a consequence, the skilled person would have seen no particular reason not to consider D2. In view of A8 he would not see any difficulty in applying the teaching of D2 to the gearbox disclosed in D1.

7.7.4 The respondents also argue (by referring to R15) that a skilled person dealing with the design of large wind turbine generators, which are costly devices to be installed in rough conditions with difficult access and with an intended design life of 20 years would not depart from accepted practice unless there was an expectation of success based on a reliable teaching. To be reliable such a teaching should be clearly related to the technical field of the patent in suit.

One particular reason for his caution is the so-called lubricant retention or oil-pocket theory: oil retention was considered exceptionally problematic for low speed gear stages such as those presently under discussion.

Starting from D1 the skilled person would therefore not apply the teaching of D2, or of any other document disclosing superfinishing outside of the technical field of the patent in suit, because the roughness values which were customary in gearboxes for wind turbine generators were significantly higher than those disclosed in D2 and now claimed in claim 1 of the main request.

7.7.5 The Board disagrees.

The question whether a skilled person would consider the teaching of documents which are not strictly related to the specific field of the patent as a priori unreliable, and whether and to what extent neighbouring areas beyond the specific field of the patent in suit might be taken into consideration when assessing inventive step is addressed in detail in the Case Law of the Boards of Appeal (supra, I.D.8.2). Reference is frequently made to T 176/84 (OJ EPO 1986, 50) and T 195/84 (OJ EPO 1986, 121).

Accordingly, when examining inventive step, a skilled person would, as well as considering the state of the art in the specific technical field of the patent in suit, look for suggestions in neighbouring fields or a broader general technical field if the same or similar problems arise, and if he could be expected to be aware of such fields.

This is because solutions of general technical problems in non-specific (general) fields have to be viewed as forming part of the general technical knowledge which a priori is to be attributed to those skilled persons versed in any specific technical field.


This situation clearly applies to the present case for the combination of the teachings of D1, which is in the same technical field of the patent in suit, with those of D2, which, as discussed above, relates to the broader field of gear design.

The Board also notes that the skilled person would also consider that the teaching of D2 could be used with a reasonable expectation of success on the basis of the oil pocket retention theory, as it is not in contrast therewith. Indeed, paragraph [12] of this document warns the skilled person that excessively smooth surfaces (less than 3 microinches, corresponding to less than 0,08 microns, which is a value well below the claimed 0,25 microns) would be disadvantageous as they would result in reduced oil retention for lubrication.

In view of the above, the particular circumstances of the present case make that the present decision does not need to go into the ratio decidendi of national decision R15.

7.7.6 As a consequence of the above, the Board concurs with the appellants that the skilled person is in a position to apply the teachings of D2 to the input planetary gearbox of D1.

7.8 D1+D2 - result of the combination of teachings

The Board concurs with the appellants that the combination of the teachings of D1 and D2 renders the subject-matter of claim 1 of the main request obvious.

This is because a skilled person would indeed take a cautious approach. As the respondents argue, because the surface roughness values normally chosen for these gears are above 0,25 microns, he would follow the warning given at paragraph [12] of D2 and limit at first the superfinishing to the upper value (10 microinches) of the range mentioned in this document, which is 0,25 microns.

D2 discloses a system of two gear elements (gear and pinion, see claim 1), in which all gear surfaces of both are superfinished (see claims 5 and 6).

By following this additional teaching of D2 the skilled person would inevitably arrive at the subject-matter of claim 1 of the main request.

8. Independent claim 9 of the main request

D1 discloses a method for reducing lubricant debris (by improving micro-pitting resistance, see page 9, point 4.4.5.4; see also page 54, table G-7, showing the presence of laminar wear debris particles coming from the gears in the lubricant) in an input stage planetary gearbox (see page 21, point A.5.4, "Gear arrangements" where planetary gear arrangements are disclosed in the fourth and fifth paragraphs) for a large wind turbine generator (up to 750 kW, see page 1, point 1, last line), wherein the planetary gearbox comprises a hollow wheel gear, two or more planet gears, and a sun gear (as it is always the case with planetary gearboxes), the method comprising smoothing the teeth of one or more of the hollow wheel gear, two or more of the planet gears and a sun gear to a low surface roughness before operating the gearbox (see page 9, point 4.4.5.4).

D1 only fails to disclose one feature of the subject-matter of claim 9, namely that the method comprises superfinishing (smoothing) the teeth of one or more of the hollow wheel gear, two or more of the planet gears and a sun gear to a surface roughness of 0,25 mym ("microns") or less.

This difference substantially corresponds (mutatis mutandis) to the difference already established and discussed in relation to claim 1.

Based on this difference, the appellants formulated an inventive step attack based on the combination of the teachings of D1 and D2 by adapting the arguments already submitted in relation to claim 1, to the discussion of the method claim.

Also the arguments provided by the respondents in support of inventive step for the subject-matter of this claim substantially correspond to those which have already been discussed above in relation to claim 1.

As a consequence, the Board concludes that also the subject-matter of claim 9 of the main request lacks an inventive step, for the same reasons as discussed above in relation to claim 1 of the main request.

9. Admissibility of the (new) first auxiliary request

9.1 The appellants contest the admissibility of the (new) first auxiliary request filed as late as the oral proceedings with the argument that the subject-matter of independent claims 1 and 9 (to be renumbered as 2) is not clearly allowable as the amendments made do not overcome the inventive step objections already discussed in relation to claims 1 and 9 of the main request.

9.2 The respondents argue that claim 1 and 9 of the (new) first auxiliary request are clearly allowable, and that this is particularly evident for claim 9 in the light of the ratio decidendi of G 2/88 (supra).

9.3 The Board disagrees.

The request is made up of a claim 1 which the Board can recognise as having been in an earlier auxiliary request (with "or less"), and, more importantly, a claim 9 which was only filed with letter of 23 September 2016. The admissibility of the request can therefore clearly be dealt with under Article 13(1) RPBA.

In accordance with the jurisprudence (see Case Law of the Boards of Appeal, supra, IV.E.4.4.1 a)) one criterion for regarding late-filed auxiliary requests as inadmissible under Article 13(1) RPBA is that they are directed to subject-matter which prima facie is not allowable.

This may either mean that such subject-matter does not give rise to new objections or that it does not overcome an outstanding objection.

9.3.1 Claim 9 is not clearly allowable.

The respondents note that claim 9 of the (new) first auxiliary request has been reformulated as a method for reducing or eliminating damage to the bearings of an input stage planetary gearbox for a large wind turbine generator by reducing lubricant debris generated from the gear teeth.

Such a claim clearly overcomes the inventive step objections discussed above. This is because, based on G 2/88 (supra), it should be regarded as a use claim (use of a gearbox), whereby such a use achieves a beneficial effect which was not known before (eliminating damage to the bearings), and therefore as including this technical effect as a functional technical feature.

Clear allowability is given because of this "eliminating damage to the bearings".

9.3.2 The Board disagrees.

G 2/88 (supra) deals with the novelty of second non-medical use in a claim amended from a "compound X" to a "use of compound X for a particular purpose", or similar wording, where the only novel feature was the purpose of that use.

G 2/88 (supra) does not appear to the Board to be applicable in the present case, even if one would not see it as an amendment to the earlier existing method claim 9, but as an amendment to product claim 1.

The reason is that claim 9 is not directed towards the use of the input stage planetary gearbox, but to its production steps. It is a production method. For this reason it is not a prima facie allowable amendment of product claim 1.

9.3.3 Seeing claim 9 for what it is, namely an amendment to method claim 9, the inventive step arguments in point 8 above continue to apply. If the method steps are not inventive, the (realisation of) the inherent effects of executing that obvious method cannot make the subject-matter of claim 9 inventive.

9.3.4 Claim 1 of the (new) first auxiliary request has been amended to further specify that all of the teeth of all of the gears (instead of a plurality of teeth of one or more of the gears) have been superfinished to 0,25 microns.

As discussed above in relation to claim 1 of the main request, the skilled person starting from D1 would apply the teaching of D2 to reduce micro-pitting. This teaching relates to two interacting gear elements and consists in smoothing the gear surfaces of both those elements (see claim 6).

The respondents did not provide any reason why a skilled person would not superfinish all the surfaces of all the teeth of all of the gears of D1 in order to minimize micro-pitting in the gearbox. Such a reason is also not apparent to the Board.

As a consequence, the Board does not see how the amendments to claim 1 of the (new) first auxiliary request may be considered as leading to subject-matter which is now clearly allowable for inventive step.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

This decision T 1921/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T192112.20161026. The file wrapper can be found here. Photo "Signature" by Christian Pierret obtained via Flickr under CC BY 2.0 license (no changes made).

T 2369/12 - Everything you submit can and will be used against you?

Delta Patents Patent Law -


The Examining Division held a particular auxiliary request not to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC).

In the appeal, the applicant now appellant submits a post-published document (Exhibit A) with the title "Efficacy of Enterisol® Ileitis administered to Lawsonia-positive pigs 1 to 6 days of age" and argues that there was no evidence on file that there were serious doubts substantiated by verifiable facts that the application lacked sufficient disclosure, and indeed, that the post-published data contained in "Exhibit A" made it plausible that vaccination with the L. intracellularis vaccine in the face of maternal immunity in young pigs would be effective.

The present case shows the Board scrutinizing Exhibit A and - probably to the dismay of the appellant - concluding that it is in fact Exhibit A which as a whole raises serious doubts on the suitability of the claimed bacteria for vaccination. "Everything you submit can and will be used against you"?

Reasons for the Decision
(...)

Auxiliary request I - Claim 1

Disclosure of the invention - Article 83 EPC

3. Article 83 EPC requires that the European patent application discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. In the case of a therapeutic use, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, II.C.6.2).

4. For the therapeutic use of claim 1, the application must disclose the suitability of the attenuated L. intracellularis bacteria for the vaccination (i.e. for inducing immunity) of 1 to 9 day old pigs against L. intracellularis infections, when administered by oral drench.

5. The appellant argued that the application disclosed the suitability of attenuated L. intracellularis bacteria for the vaccination of 1 to 9 day old pigs against L. intracellularis infections. In particular, Examples 2 and 3, taken alone, demonstrated the suitability of attenuated L. intracellularis bacteria for the vaccination of 1 to 9 day old pigs against L. intracellularis infections.

6. The board does not consider these arguments as persuasive in the face of the evidence of Exhibit A, submitted by the appellant with the statement of grounds of appeal (see points 7 to 8.5, below). The results contained in the application were either from in vitro or tissue culture assays (Examples 1 and 2) or, if they were generated through animal studies, relate to maternal antibody-negative piglets or piglets of 3 weeks of age (Examples 3 and 4, respectively). On the other hand, the evidence in Exhibit A derives from a clinical study representing an embodiment of the claimed subject-matter, i.e. it provides direct evidence of the suitability of attenuated L. intra-cellularis for the purpose claimed and is therefore given more weight than the results contained in the application.

7. The Exhibit provides the results of a study "conducted to evaluate Enterisol® Ileitis vaccine efficacy in suckling piglets derived from Lawsonia intracellularis exposed (group A) and negative sows (group B) and to determine if there was any maternal interference with vaccine efficacy against a virulent, pure culture L. intracellularis challenge" (see Exhibit A, page 1).

8. Piglets in groups A and B were further divided into subgroups 1 to 6 (see Tables 1 and 2 of the Exhibit). Piglets in subgroups 1 and 4 were vaccinated with a single dose of attenuated modified live

L. intracellularis (Enterisol® Ileitis) at 1 week of age. Piglets in groups 2, 3, 5 and 6 received a placebo. At 6 to 7 weeks of age, piglet groups 1, 2, 4 and 5 received a virulent, pure culture of L. intracellularis challenge, while groups 3 and 6 did not.

8.1 All piglet groups were humanely euthanised and evaluated for macroscopic (gross) and Lawsonia-specific microscopic lesion development at 3 weeks post challenge administration (9 to 10 weeks of age; supra).

8.2 Table 2 provides a summary of average gross lesion scores for the small and large intestines, with group 1 being the trial group (piglets from L. intracellularis exposed sows, vaccinated) and group 2 being the control group (piglets from L. intracellularis exposed sows, unvaccinated). It can be seen from the table that the trial group has significantly larger intestinal lesions than the control group.

8.3 Table 3 provides a summary of average microscopic lesion scores for the small, large and whole intestines, with group 1 being the trial (vaccinated) group and group 2 being the control (unvaccinated) group. Here too, the trial group has significantly larger intestinal lesions than the control group.

8.4 The appellant argued that, although Tables 2 and 3 of the study report showed that group 1 piglets (from Lawsonia positive sows, vaccinated and challenged) had greater gross average lesion scores than the unvaccinated challenge control (group 2), the data in Table 4 confirmed that the same group, had better daily clinical scores than the unvaccinated control group.

8.5 Table 4 does indeed show that group 1 piglets had fewer clinical symptoms of infection than those in the challenge control (group 2). However, given the significance of intestinal lesions as a symptom of infection and of the fact that two out of three measures of infection were significantly worsened in piglets from sows exposed to L. intracellularis bacteria in comparison to the non-vaccinated piglets from the same sows, the board must conclude that Exhibit A as a whole raises serious doubts as to the suitability of attenuated L. intracellularis bacteria for the vaccination of 1 to 9 day old pigs against L. intracellularis infections when administered by oral drench, which cannot be overcome by the results in the application, given their indirect nature (see point 6 above).

9. In view of the above, the board holds that the application does not disclose the invention of claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

(...)

11. In view of the above considerations, none of the pending claim requests relates to an invention for which the application meets the requirements Article 83 EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 2369/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T236912.20170317. The file wrapper can be found here. Photo "Miranda Warning" by Mike Licht obtained via Flickr under CC BY 2.0 license (no changes made).

T 488/16 - Not plausible at the filing date

Delta Patents Patent Law -

Is it plausible that the compound had the effect?

In this opposition appeal the effect (inhibiting PTK activity) of the claimed compound (dasatinib) was supported with post-published documents: documents (9) and (10) filed during the Examination procedure and documents (36) and (37) filed with the statement of the grounds. 

The application as filed contains a large number of compounds of which one is selected in the claim under appeal. The decision does not contest that the post-published documents show that this compound works, indeed works very well. The question is, whether this was plausible at the filing date. The board maintains the revocation of the patent. 


Reasons for the Decision
1. The appeal is admissible.
2. As communicated in advance to the board (see point IX above), respondent 2, who did not submit any comments or observations with regard to the substantive issues, did not attend the oral proceedings before the board, to which it had been duly summoned. The board decided to continue the proceedings pursuant to Rule 115(2) EPC and Article 15(3) RPBA.
3. Admission of documents (36), (37) and (38)
3.1 Documents (36) and (37) were filed with the statement of grounds of appeal in direct response to the opposition division's decision revoking the patent. In the decision under appeal, the opposition division was of the opinion that the technical effect relied on by the appellant had not been plausibly demonstrated at the filing date. Furthermore, it criticised the lack of an identifiable pharmacophore. As a consequence, contrary to the opposition division's initial indication in its preliminary opinion, the post-published evidence was not taken into account and inventive step was not acknowledged.
The appellant challenged the opposition division's findings and addressed these key issues in its statement of grounds of appeal, in particular the concern as to the lack of an identifiable pharmacophore. Documents (36) and (37), dealing with the question of what the application conveyed to the skilled reader, were filed in support of the appellant's position that the opposition division erred in its assessment of what was plausibly disclosed in the application, and consequently in its assessment of inventive step. In these circumstances, the board is of the opinion that the submission of these documents with the statement of grounds of appeal is an appropriate and legitimate attempt by the appellant to address the objections raised in the decision under appeal and to further support its position with respect to plausibility and inventive step.
The argument of respondent 1 that these declarations might have been considered much earlier and could therefore have been filed at a much earlier state is not convincing. The title page of both documents makes reference to such data as the patent, application and appeal number. It identifies the patentee and the opponents and, in this context, also mentions third party observations. In the board's opinion this reference is not an indication that the present declarations were a late reaction to these third party observations, which for some unknown reasons were not filed before.
3.2 Hence, the board decided to admit documents (36) and (37) into the proceedings.
3.3 Document (38) was filed about one month before the oral proceedings took place. None of the respondents raised an objection to its introduction into the proceedings. Nor did the board see any reason to reject this document. Consequently, document (38) was admitted into the proceedings.
4. Post-published documents
4.1 Documents (9) and (10), in particular document (9), on which the appellant relied as evidence that the presently claimed compound dasatinib showed protein tyrosine kinase (PTK) inhibitory activity and was therefore suitable in the treatment of disorders associated therewith, particularly cancer, were filed more than three years after the filing date of the patent in suit (document (9) in December 2004 (on the Internet in July 2004); document (10) in November 2003). In the decision under appeal, the opposition division decided not to take these documents into account on the grounds that the alleged activity had not been made plausible at the effective date of the patent in suit and that the post-published documents were the first disclosure going beyond speculation. This decision was challenged by the appellant, who continued to rely on these documents as confirmation for a plausible disclosure of dasatinib as PTK inhibitor.
4.2 It is established jurisprudence of the boards of appeal that the assessment of inventive step is to be made at the effective date of the patent on the basis of the information in the patent together with the common general knowledge then available to the skilled person. Post-published evidence in support that the claimed subject-matter solves the technical problem the patent in suit purports to solve may be taken into consideration, if it is already plausible from the disclosure of the patent that the problem is indeed solved (see Case Law of the Boards of Appeal, 8th edition, I.D.4.6; T 1329/04, point 12 of the Reasons; T 1043/10, point 12 or the Reasons).
Thus, for post-published evidence to be taken into account, it is necessary to establish whether or not the asserted activity has been made sufficiently plausible for dasatinib at the effective date of the patent in suit. Basis for this assessment is the application as filed and the common general knowledge of the person skilled in the art at the filing date.
4.3 The application is directed to an extremely broadly defined group of compounds of the following generic formula I:
FORMULA/TABLE/GRAPHIC
Q is an aryl ring or a 5- or 6-membered heteroaryl ring (see page 3, lines 5 to 14); the variables are defined on page 3, line 10 to page 8, line 7. Furthermore, a subgroup is defined having the following general formula II:
FORMULA/TABLE/GRAPHIC
were A is carbon or nitrogen, B is nitrogen, oxygen and sulfur, X is oxygen and sulfur and the other variables are defined as for formula I (see page 8, lines 8 to 18).
Preferred compounds of formula I are defined on page 13, line 16 to page 14, line 2, where Q is thiazole, Z is a single bond and R2 and R4 are hydrogen. Taking into account, the more preferred definitions of the variables R1, X1, X2, R3 and R5, the information on pages 13 and 14 translates into the following formula
FORMULA/TABLE/GRAPHIC
The application also discloses 580 compounds falling within the scope of general formula I, including dasatinib (see example 455).
4.4 On page 39, line 10 to page 43, line 25, the application describes a number of PTKs, which are potential targets of the claimed compounds, and the diseases or disorders associated therewith. Particular types of kinases, which are listed in this context are the non-receptor kinases Lck, Fyn, Lyn, Src, Yes, Hck, Fgr and Blk, which belong to the Src-family (page 39, lines 10 to 15) or the receptor kinases HER1 and HER2, which belong to the epidermal growth family (see page 42, line 30 to page 43, line 3 and page 1, lines 20 to 21). Other types of receptor and non-receptor tyrosine kinase families are mentioned on page 1, lines 18 to 24. As is apparent from pages 39 to 43, inhibition of specific protein tyrosine kinases are associated with specific disorders, for example Lck inhibitors are of value in the treatment of T-cell mediated diseases, such as arthritis, multiple sclerosis, lupus, transplant rejection delayed-type of hypersensitivity, certain types of cancer, etc; Hck and Fgr are important in the Fc gamma receptor response and are considered valuable in the treatment of inflammatory bowel disease or autoimmune glomerulonephritis; Lyn and Src are important in the Fc epsilon response and are of value in the treatment of asthma or allergic disorders; HER1 and HER2 can be used in the treatment of proliferative treatments, such as psoriasis and certain types of cancer.
4.5 On page 50, line 4 to page 53, line 18, the application refers to assays "which can be employed in ascertaining the degree of activity of a compound ("test compound") as PTK inhibitor" (see page 49, lines 29 to 30). The assays are generically described and refer to the "protein kinase of interest" and the "test compound" or "compounds of interest" to be assayed. No further details are provided in this respect. Nor are any results, for example IC or Ki values, provided. Indeed, there is no evidence at all in the application as filed that shows that any of the compounds falling within the scope of formula I, let alone dasatinib, is active as an inhibitor for any of the specific protein tyrosine kinases, except a mere assertion on page 50, lines 1 to 2 with reads that "Compounds described in the following Examples have been tested in one or more of these assays and have shown activity." No further information is provided. No individual values or range of values are given. No information as to whether the observed "activity" is suitable for the intended use, i. e. the treatment of a number of diseases and disorders, is provided. In the board's judgement, a mere verbal statement that "compounds have been found active" in the absence of any verifiable technical evidence is not sufficient to render it credible that the technical problem the application purports to solve, namely providing PTK inhibitors to treat disorders or diseases associated therewith, is indeed solved, in particular in the present case, where the invention is directed to a very broadly defined class of compounds encompassing millions of structurally rather different candidates with unknown properties, where even the examples show a broad structural variation and where it is inherently unlikely for any skilled person that all of the compounds of the invention or at least a substantial amount of them will exhibit the alleged PTK inhibitory activity.
In the present case, there is also no evidence on file showing that, at the date of filing, the skilled person was in the possession of common general knowledge which, even in the absence of data, made it plausible that the compounds of the invention, in particular dasatinib, could be expected to show PTK inhibitory activity. The appellant's argument that a number of structurally different compounds are known as PTK inhibitors and are in clinical trials or near clinical development (see document (34), point 3 on pages 559 to page 565) is not pertinent in this context, as no conclusion with regard to PTK inhibitory activity of dasatinib can be drawn from this knowledge in the absence of any correlation between structural features and function.
Even if the board were to accept the assertion on page 50 of the application as filed as an indication that some tests had been carried out, no information is provided as to which of the structurally rather different compounds had been tested and in which assay, in particular whether any of the tests included dasatinib. In this context, the board would like to emphasise that it does not accept the appellant's contention that the passage on page 50 is to be read in the sense that all compounds of the examples had been tested. As pointed out by the respondents, such a reading also appears to be in conflict with the appellant's post-published evidence according to which certain compounds of the examples were inactive at a specific concentration. In this context, the board notes that in document (38), Mr Barrish, one of the inventors, refers to a review of the results of the assays performed before the patent was filed, which showed that these specific compounds were tested and found active in "one or more PTK assays" (see points 20 and 21). Irrespective of fact that document (38) can not be relied on for the purpose of what has been made plausible by the application (see point 4.7 below), no evidence was provided in support of this assertion. Nor are any results concerning the performance of dasatinib provided in document (38).
4.6 In support of its position that the claimed effect had been made plausible for the skilled reader, the appellant relied on the declarations of Professor Alessi and Professor Parang (documents (36) and (37)).
4.6.1 As a preliminary remark, the board would like to point out that the opinion of highly skilled experts on how a disclosure of a document is to be understood does not reflect the view of the notional skilled addressee, who is a person of ordinary skills aware of what is common general knowledge in the art at the relevant date. Experts give evidence based on their professional experience and expertise which is not common general and will have an influence on their way of reading the disclosure of a document. Since the assessment of the disclosure from the point of view of the skilled person does not normally call for special technical knowledge or experience, expert evidence on this matter will not be pertinent. Such evidence is only necessary when the board does not consider itself in a position to decide upon a matter without technical assistance. As the board includes two technically qualified members such cases will be rare and will only occur in special circumstances. Finally, opinions by party experts are subject to the free evaluation by the board. It is therefore the adequate substantiation and persuasiveness of the experts' propositions that matter rather than the mere fact that they are presented as an expert opinion which is a means of evidence within the meaning of Article 117(1) EPC.
4.6.2 In his declaration, Professor Alessi mainly comments on the suitability and reliability of the assays referred to in the application for measuring the effectiveness of kinase inhibition (see paragraphs 13 to 27 of document (36)). This is not contested by the board. However, the board fails to see the significance of Professor Alessi's observations, in particular since they do not provide an explanation as to why the skilled reader would simply accept the assertion on page 50 of the application without question. In the board's opinion, the skilled reader can be expected to react in a way common to all persons skilled in the art, which means that any acceptance as to whether or not a particular assertion is correct must be based on verifiable facts, be it information provided in the patent application or available to the skilled person as common general knowledge. In the present case, no such verifiable facts exist. The situation is further aggravated taking into account that, contrary to the appellant's view, the skilled person is not in a position to readily verify the assertion on page 50 in the absence of any detailed information as to the conditions under which the assays are to be carried out. As is apparent from point 4.5 above (see last paragraph), whether or not a compound is "active" apparently also depends on its concentration.
4.6.3 In his declaration, Professor Parang mainly reviewed the examples in the application, which in his opinion indicated to the skilled person a progression through a research program. Starting from early hit compounds, such as example 1, successive variants were synthesised to improve those compounds. Professor Parang identified in the first 129 examples three groups of thiazole compounds (see document (37), page 5, Figures 1, 2 and 3). From example 376 onwards, he identified a further common core structure with a 2-chloro 6-methyl-phenyl group at the carboxamide in position 5 of the thiazole ring (see Figure 4 on page 6 of document (37)). According to Professor Parang, the continued re-use of this common structure meant that a useful pharmacophore had been identified and the additional work embodied in the subsequent examples was to fine tune and optimise the physicochemical properties, particularly the solubility of the compounds. Dasatinib was one of the compounds that re-use the aforementioned common structure. It also fell into the preferred group of compounds as described on page 13 to 14 of the application which lent additional support to it being a PTK inhibitor.
4.6.4 The board agrees with Professor Parang insofar as it is possible to group compounds from the examples together which share a common structural moiety, such as a methyl substituted thiazole ring as illustrated in Figure 2 of the declaration, a 2,4,6 trimethylphenyl groups at the carboxamide in position 5 of the thiazole ring as illustrated in Figure 3, or a 2-chloro 6-methyl phenyl at the carboxamide in position 5 of the thiazole ring as illustrated in Figure 4. Other groups are also apparent, for example, compounds without a thiazole ring (see examples 368 to 375), compounds with a 2-chloro 6-methyl phenyl at the carboxamide in position 5 of the thiazole ring but no aryl or heteroaryl group at the nitrogen in position 2 as in Figure 4 (see examples 322 to 362), compounds without a 2,4,6-trimethylphenyl group or a 2-chloro 6-methyl phenyl group as illustrated in Figures 3 and 4 (see examples 410 to 427 or 521 to 526, 539 to 551). Indeed, no moiety is apparent which is common to all examples.
However, in the complete absence of any data, no conclusion can be drawn as to whether or not the examples reflect a progression in the direction of improved PTK inhibitory activity. Nor is any conclusion possible as to whether or not a suitable pharmacophore reflected by the formula in Figure 4 of Professor Parang's declaration, which includes dasatinib, had indeed been found at the filing date of the application.
4.6.5 In summary, neither Professor Alessi's nor Professor Parang's declaration can support the appellant's view that the alleged activity had been made plausible for dasatinib at the time of filing.
4.7 Document (38), on which the appellant also relied, is not relevant in answering the question whether the application made it plausible for the skilled person that dasatinib showed PTK inhibitory activity, since it refers to knowledge which was not available to the skilled person at the filing date. Furthermore, although this document refers to results, which had been obtained before the filing date of the patent in suit, none of these results were included in this document or were ever provided in the proceedings before the EPO, in particular not for dasatinib.
4.8 The appellant also argued that the EPC does not require experimental proof. A summary statement as provided on page 50, lines 1 to 2 was sufficient to meet the low plausibility threshold, which was satisfied in the absence of any substantiated doubts. No absolute proof was required and there was no legal basis to provide any raw data. As the threshold test had been met, the post-published evidence which merely confirmed the PTK inhibitory activity of dasatinib should be taken into account.
4.9 The board agrees with the appellant insofar as it is not always required to include experimental data or results in an application (see T 578/06, point 13 of the Reasons). It is however a conditio sine qua non that it is shown that the technical problem underlying the invention was at least plausibly solved at the filing date. If, as in the present case, the nature of the invention is such that it relies on a technical effect, which is neither self-evident nor predictable or based on a conclusive theoretical concept, at least some technical evidence is required to show that a technical problem has indeed been solved. In the board's judgement, it is not acceptable to draw up a generic formula, which covers millions of compounds, vaguely indicate an "activity" against PTKs and leave it to the imagination of the skilled reader or to future investigations to establish which compound inhibits which kinase and is therefore suitable to treat the respective diseases associated therewith. In this context, the board notes that it has been acknowledged by the appellant that the skilled person would not expect that each compound would be active against all kinases. The board would also like to emphasise that in the present case the issue is not the absence of any in vivo data or clinical data, but rather the absence of any verifiable data with regard to the asserted technical effect.
Furthermore, contrary to the appellant's assertion, the post-published document (9) - the only document which refers to dasatinib - does not merely confirm the technical effect, but rather discloses a specific PTK profile, which identifies dasatinib as an inhibitor with potent anti-tumour activity (see table 2 on page 6660). No such disclosure is present in the application as filed.
4.10 With regard to the appellant's argument that the burden of proof was on the respondents to show that the application did not solve the technical problem it purports to solve, the board notes the following:
In the present case, no decision is required as to whether there exists, as argued by the appellant, a presumption that a granted patent solves the technical problem it purports to solve. The respondents (opponents), starting from the disclosure in the application as filed, have provided technically sound and persuasive arguments as to why the alleged effect had not been made plausible, which raises doubts as to whether the technical problem had been solved at the filing date, in particular by dasatinib. Thus, even if the burden was on the opponents to raise substantiated doubts, they discharged of it. It then rests on the appellant who continues to rely on the alleged effect to counter-argue and to rebut these doubts.
4.11 In support of its case, the appellant also made extensive reference to the Case Law of the Boards of Appeal. In particular, it relied to a number of decisions in which the boards have taken post-published evidence into account, for example T 428/12, 1677/11, T 715/03 (erroneously referred to as T 517/03), T 1642/07 or T 210/11.
4.12 In the board's judgement these decisions cannot support the appellant's case.
(...)

For these reasons it is decided that:
1. The appeal is dismissed.
2. The request for referral to the Enlarged Board of Appeal is rejected.

This decision T 0488/16 (pdf) has European Case Law Identifier:ECLI:EP:BA:2017:T048816.20170201. The file wrapper can be found here. Photo by AKuptsova obtained via Pixabay under the Pixabay License (no changes made).

T 287/14 - Disclaimers: donot try this at home!

Delta Patents Patent Law -


Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division posted on 11 December 2013 revoking European patent No. 1 477 525.

II. European Patent No. 1 477 525 was granted on the basis of 7 claims, claim 1 reading as follows:

"1. Polyolefin composition with low coefficient of linear thermal expansion (CLTE); determined according to DIN 53752 and good impact strength and low density, having an MFR (measured according to ISO 1133 with a load of 2.16 kg at 230°C) of from 5.0-60 g/10 min, which polyolefin composition comprises

(A) 90-99 wt% of a heterophasic propylene copolymer containing

a) 60-80 wt% of a matrix phase comprising a propylene homopolymer or a propylene copolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin and

b) 20-40 wt% of a disperse phase comprising an ethylene rubber copolymer with from 20-80 mol% ethylene and from 80-20 mol% of at least one C3-C8 alpha-olefin,

where the intrinsic viscosity (measured according to DIN ISO 1628-1 (October 1999) in decalin at 135°C) of the XCS-fraction of the heterophasic copolymer is <= 2.0 dl/g and

(B) 1-10 wt% of an inorganic filler,

wherein the composition does not contain a beta-nucleating agent."

III. A notice of opposition was filed in which revocation of the patent in its entirety was requested.

IV. The decision of the opposition division to revoke the patent was announced at the oral proceedings on 21 November 2013. The opposition division found that several selections in the disclosure of D1 (EP 1 344 793) were necessary in order to arrive at the object of claim 1 as granted without the disclaimer. Therefore claim 1 was already novel over D1 even without the disclaimer and there was "no legal basis for the introduction of the disclaimer (Art. 100(c) & Art. 123(2) & G1/03)". Since the opposition division found that the claims as granted did not meet the requirements of Article 123(2) EPC, it revoked the patent.

V. The proprietor (appellant) lodged an appeal against that decision. With the statement setting out the grounds of appeal dated 16 April 2014 the appellant requested that the decision of the opposition division be set aside and that the opposition be rejected.

VI. In its reply to the statement of grounds of appeal dated 21 October 2014, the opponent (respondent) requested that the appeal be dismissed.

VII. On 24 July 2015, the appellant filed the first to third auxiliary requests.

VIII. In a communication sent in preparation to the oral proceedings, the Board summarised the points to be dealt with and provided a preliminary view on the disputed issues.

IX. With letter of 20 April 2017, the appellant filed a modified version of the first to third auxiliary requests.

First auxiliary request

Claim 1 of the first auxiliary request differed from claim 1 as granted in that "which polyolefin composition comprises" was replaced by "which polyolefin composition consists of" and the disclaimer "wherein the composition does not contain beta-nucleating agent" was removed.

Second auxiliary request

Claim 1 of the second auxiliary request read:

"1. Process for preparing a polyolefin composition with low coefficient of linear thermal expansion (CLTE); determined according to DIN 53752 and good impact strength and low density, having an MFR (measured according to ISO 1133 with a load of 2.16 kg at 230°C) of from 5.0-60 g/10 min, consisting of meltmixing 90-99 wt% of a heterophasic propylene copolymer base resin with 1 to 10 wt% of inorganic filler, based on the propylene copolymer at temperatures from 175°C to 250°C, optionally adding stabilizers, and cooling and crystallizing the melt,

wherein the heterophasic propylene copolymer contains

a) 60-80 wt% of a matrix phase comprising a propylene homopolymer or a propylene copolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin and

b) 20-40 wt% of a disperse phase comprising an ethylene rubber copolymer with from 20-80 mol% ethylene and from 80-20 mol% of at least one C3-C8 alpha-olefin,

where the intrinsic viscosity (measured according to DIN ISO 1628-1 (October 1999) in decalin at 135°C of the XCS-fraction of the heterophasic copolymer is <= 2.0 dl/g."

Third auxiliary request

Claim 1 of the third auxiliary request differed from claim 1 of the second auxiliary request in that the wording "optionally adding stabilizers" was removed.

X. With letter of 18 May 2017, the respondent contested the admission of the auxiliary requests and provided new document D10 (EP 2 055 739).

XI. On 30 May 2017, the appellant submitted the fourth and fifth auxiliary requests.

Fourth and fifth auxiliary requests

Claim 1 of these requests corresponded to claim 1 of the second and third auxiliary requests respectively in which the heterophasic propylene copolymer was defined as follows:

"...wherein the heterophasic propylene copolymer consists of

a) 60-80 wt% of a matrix phase consisting of a propylene homopolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin and

b) 20-40 wt% of a disperse phase consisting of an ethylene rubber copolymer with from 20-80 mol% ethylene and from 80-20 mol% of at least one C3-C8 alpha-olefin,..."

XII. Oral proceedings were held on 2 June 2017.

XIII. The arguments provided by the appellant, as far as relevant to the present decision, can be summarised as follows:

Main request

Article 123(2) EPC

The disclaimer was allowable in claim 1 because it restored novelty over D1. D1 disclosed a polyolefin composition containing a heterophasic propylene copolymer (A) and a beta-nucleating agent (B). The amount in (A) in the polyolefin composition was directly and unambiguously derivable from the subject matter of claims 8, 6, 4, 3 and 1. That claim combination disclosed that the composition contained only the components (A), (B) and a preferred amount of 1-5 wt% of fillers for enhancing stiffness. Since D1 disclosed that the amount in (B) in the composition was up to 2 wt%, it could be deduced that the amount in (A) had to be between 93 and 99 wt%. That amount in (A) did not result from a selection within D1 and was completely contained in the range of 90-99 wt% of the patent in suit. As to the nature of the fillers for enhancing stiffness, the common general knowledge of the person skilled in the art at the priority date of the patent in suit was that these fillers were mostly inorganic. That was confirmed by D1 as it only disclosed talc as a filler for enhancing stiffness. Also, only inorganic fillers could be compounded at temperatures of up to 250°C as disclosed in D1.

There were then only three further numerical ranges relating to the melt flow rate, the amount in matrix phase (a) and in disperse phase (b) from which a selection had to be made in order to arrive at the subject matter of granted claim 1. The large overlap of the ranges of melt flow rate according to D1 and the patent in suit as well as the values of melt flow rate disclosed in examples 3, 7, 8, 10 and 11 of D1 established that the person skilled in the art would have seriously contemplated a melt flow rate of around 5 g/10min, i.e. within the lower part of the claimed range of the patent in suit. Regarding the amount in disperse phase (b), the upper limits of the ranges defined in claim 1 (5-50 wt%) and claim 3 (9-20 wt%) of D1 could be combined to generate a preferred range of 20-50 wt% that completely contained the range of 20-40 wt% according to claim 1 of the patent in suit. Although the amounts in disperse phase (b) (11 wt%, 7.5 wt% and 16 wt%) in polymers 1, 3 and 4 in Table 1a of D1 were not according to the patent in suit, they nevertheless fell within the preferred range of claim 3 of D1. This showed that the skilled person would have worked in the area overlapping the range of the patent in suit. Since the heterophasic propylene copolymer (A) was made up of the matrix phase (a) and the disperse phase (b) only, preferred ranges in matrix phase (a) were deducible from the preferred ranges in disperse phase (b) (7-25 wt% or 9-20 wt%) disclosed in claim 3 of D1. The calculated ranges in matrix phase (a) in D1 (75-93 wt% or 80-91 wt%) overlapped significantly with the range disclosed in claim 1 of the patent in suit.

In conclusion, the disclosure of D1 showed an extensive overlap with the subject matter of claim 1 of the patent in suit and it could be deduced from D1 that the skilled person would have seriously contemplated working in the area of overlap. The subject matter of claim 1 of the patent in suit without the disclaimer was not novel in view of the disclosure of D1. The disclaimer in claim 1 of the main request was therefore allowable because D1 was otherwise novelty destroying for the claimed subject matter.

In any case, the disclaimer was still allowable in view of G 1/93 because it merely limited the protection conferred by the patent as granted and it did not provide a technical contribution to the claimed subject matter, as could be seen from a comparison of the notched impact strength and of the flexural modulus of the compositions of examples 7 and 8 of D1.

First to third auxiliary requests

Admittance

In claim 1 of the first to third auxiliary requests the disclaimer was removed and the subject matter was limited such that the polyolefin composition consisted of (A) and (B), excluding other additives in the composition. These requests were clearly allowable under Article 123(2) and (3) EPC and should therefore be admitted into the proceedings.

Fourth and fifth auxiliary requests

Admittance

The fourth and fifth request were filed in response to the submission of the opponent of 18 May 2017 relating to the open formulation used in claim 1 of the second and third auxiliary requests. The open language was avoided in claim 1 and the matrix phase was limited to a homopolymer on the basis of the last paragraph of page 4 of the application as originally filed. These requests were allowable. They should be admitted into the proceedings.

XIV. The arguments of the respondent, as far as relevant to the present decision, can be summarised as follows:

Main request

Article 123(2) EPC

Claim 1 of the main request contravened the requirements of Article 123(2) EPC as the disclaimer present therein was not allowable since D1 did not anticipate the subject matter of claim 1 without the disclaimer. The amount in component (A) in the composition could not be derived from D1. The presence of a filler in the composition was not mentioned in claim 8 of D1; moreover, there was no mention of the class of inorganic fillers in that document either. Since the examples of D1 only disclosed the use of 0.1 wt% of beta-nucleating agent, the skilled person would not have considered an amount of up to 2 wt%. As to the amounts in matrix phase (a) and disperse phase (b), the person skilled in the art would not have considered working in the area of overlap with the claimed range. Multiple selections in the ranges defining the amounts of the components and the range in melt flow rate were necessary to arrive at the claimed subject matter. There was no pointer to the multiple selections to be made within D1. The disclaimer was therefore not necessary to restore the novelty of the claimed subject matter. Since the disclaimer was not allowable, claim 1 contravened the requirements of Article 123(2) EPC.

The beta-nucleating agent made a technical contribution to the claimed compositions since it had an effect on the impact resistance of samples produced thereof, as could be deduced from the examples of D1. The disclaimer could not be maintained in the claim even in view of G 1/93.

First to third auxiliary requests

Admittance

Claim 1 of these requests were defined by an open formulation that allowed the beta-nucleating agent to be present in the matrix phase. As a result, claim 1 of these requests contravened the requirements of Article 123(3) EPC. As there was also no justification for their late filing, these requests should not be admitted into the proceedings.

Fourth and fifth auxiliary requests

Admittance

These requests were filed a few days before the oral proceedings only. They contained substantial modifications that raised issues that had not been discussed before the oral proceedings. Also, these requests could and should have been filed earlier. These requests should therefore not be admitted into the proceedings.

XV. The appellant requested that the decision under appeal be set aside and the case be remitted to the department of first instance for further prosecution on the basis of the patent as granted (main request), or on the basis of one of the first to third auxiliary requests filed with the letter of 20 April 2017, or on the basis of the fourth or fifth auxiliary request filed with the letter of 30 May 2017.

XVI. The respondent requested that the appeal be dismissed and that the auxiliary requests not be admitted into the proceedings. If the main request were found to meet the requirements of Article 123(2) EPC it requested that the case be remitted to the department of first instance for further prosecution. If one or more auxiliary requests were admitted, it requested an apportionment of costs in the event the case were remitted for further prosecution on the basis of an auxiliary request.

Reasons for the Decision

Main request

1. Article 123(2) EPC

1.1 The subject matter of claim 1 as granted concerns a polyolefin composition and is defined by a disclaimer "wherein the composition does not contain a beta-nucleating agent" added in the course of the examination proceedings in response to an objection of lack of novelty in view of D1. It was undisputed that that disclaimer was not disclosed as such in the application as originally filed. The opposition division found in its decision that the disclaimer was not allowable because it did not fulfil the requirements set out in the decision of the Enlarged Board of Appeal G 1/03 (OJ EPO 2004, 413).

1.2 In its decision G 1/03 the Enlarged Board decided that a disclaimer that had not been disclosed in the originally filed application may be allowable in order to:

(i) - restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;

(ii) - restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and

(iii) - disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

Also, a disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC. Finally, a claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

1.3 Since D1 is a document according to Article 54(3) EPC for the patent in suit, which has not been disputed by the parties, the question that has to be answered first in view of the admissibility of the disclaimer in claim 1 is whether it restored novelty by delimiting claim 1 against D1 (condition (i) of G 1/03). Thus, in order for the disclaimer to be allowable in this case, it is a precondition that D1 is novelty destroying for the object of granted claim 1 without the disclaimer.

1.4 Claim 1 of D1 discloses polyolefin compositions with high impact strength and high gloss, comprising

A) a heterophasic propylene copolymer containing

a) 50-95 wt% of a matrix phase comprising a propylene homopolymer or a propylene copolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin and

b) 5-50 wt% of a disperse phase comprising an ethylene rubber copolymer with from 20-80 mol% ethylene and from 80-20 mol% of at least one C3-C8 alpha-olefin and where the intrinsic viscosity of the XCS-fraction of the heterophasic copolymer is <= 2 dl/g and

B) a beta-nucleating agent.

1.5 It was submitted by the appellant that the composition of D1 which was the closest to that of claim 1 of the patent in suit corresponded to the subject matter formed by the claims 8, 6, 4 and 3 in combination with claim 1. That specific subject matter formed by the aforementioned combination of dependent claims constitutes a first selection within the disclosure of D1.

1.6 Claim 8 of D1 concerns a process for producing a polyolefin composition according to one of claims 1 to 7, characterized by mixing a heterophasic propylene copolymer containing (a) a matrix phase and (b) a disperse phase, with an effective amount of beta-nucleating agent, melting and homogenising the mixture and cooling and crystallising the mixture.

1.7 It was argued by the appellant that a polyolefin composition resulting from that process contained exclusively an heterophasic propylene copolymer containing the matrix phase (a), the disperse phase (b), a beta-nucleating agent and fillers for enhancing stiffness which leads to an amount in weight percent of the heterophasic propylene copolymer fully within the range 90-99 wt% given in claim 1. As to the only remaining numerical ranges of granted claim 1, namely 60-80 wt% for the matrix phase, 20-40 wt% for the disperse phase and 5.0-60 g/10 min for the MFR, they were overlapping with the ranges in claims 1, 3 and 4 of D1 and the examples of D1 pointed to the overlapping parts of the ranges.

1.8 Even accepting the argument of the appellant that the specific combination of claims directly and unambiguously discloses a composition with all the features of claim 1 apart from the listed ranges, the Board does not agree with the conclusion of the appellant for the following reasons.

1.9 D1 discloses numerical ranges relating to the amount of ethylene rubber copolymer as disperse phase (b) and MFR as follows:

1.9.1 The amount in ethylene rubber copolymer of the disperse phase (b) is generically defined by three ranges in D1, 5-50 wt% (claim 1 and paragraph 9), 7-25 wt% and 9-20 wt% (claim 3 and paragraph 15), overlapping the range of 20-40 wt% of claim 1 of the main request. The polyolefin compositions of examples 3, 7, 8, 10 and 11 of D1 that were found the most relevant by the appellant in that respect are based on polymers 1, 3 and 4 of Table 1a that contain an ethylene rubber copolymer in amounts of respectively 11 wt%, 7.5 wt% and 16 wt%. These amounts are all within the preferred range of 9-20 wt% of D1 but are not within the range of claim 1 of the patent in suit (20-40 wt%). It can only be concluded that D1 generically teaches that the amount in ethylene rubber copolymer of the disperse phase (b) may be chosen within a range (7-25 wt% or 5-20 wt%) overlapping with that of claim 1 of the main request (20-40 wt%), but in order to arrive at the claimed subject matter, a second selection within the general disclosure of D1 is necessary.

1.9.2 The melt flow rate (MFR) of the polyolefin compositions according to D1 is defined in claim 4 and in paragraph 16 of D1 as being comprised between 1 and 30 g/10min, preferably between 2.5 and 10 g/10 min, showing some overlap with the range of 5-60 g/10 min of claim 1 of the main request. The specific MFR values of the compositions according to the examples 3, 7, 8, 10 and 11 of D1 cited by the appellant are 2.9, 4.7, 4.9, 4.2 and 4.7 g/10min (Table 2). While these values of MFR are within the preferred range of D1, they are all outside the claimed range of the patent in suit. Even if some of these values of the examples of D1 come close to the lower end of the area of overlap, non of them was shown to fall within the range of 5-60 dl/g. It can only be concluded that D1 generically teaches that the polyolefin compositions may have an MFR within a range overlapping with that of claim 1 of the main request, but in order to arrive at the claimed subject matter, a third selection within the general disclosure of D1 is necessary.

1.10 A total of three selections within D1 is therefore needed to arrive at polyolefin compositions falling under claim 1 of the main request. D1 does not point at this very specific set of three selections. It has also not been established that the selected features of the polyolefin compositions (presence of an inorganic filler, amount in ethylene rubber and MFR) were in any way convergent so that the specific compositions selected clearly arose from D1. The Board can only conclude that D1 does not take away the novelty of claim 1 of the main request.

1.11 Under these circumstances there was no necessity to disclaim beta-nucleating agents from the scope of claim 1 in order to restore novelty over D1 as no lack of novelty was present. Therefore, the disclaimer of claim 1 of the main request does not fulfil the first condition set out in the decision of the Enlarged Board of Appeal G 1/03. As there was evidently no basis for that disclaimer in the description as originally filed, its introduction in claim 1 infringes Article 123(2) EPC.

1.12 The appellant also submitted that the disputed disclaimer did not to contribute to the technical teaching of the claimed subject-matter; its addition to claim 1 thus could not be considered to contravene the requirements of Article 123(2) EPC for the reasons given in G 1/93 (OJ EPO 1994, 541).

1.12.1 As regards decision G 1/93, a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC (see headnote 2). However, also according to this decision, the idea underlying the requirements of Article 123(2) EPC is that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (G 1/93, point 9 of the reasons). Therefore, if such a feature added to a claim is found to provide a technical contribution to the subject-matter of the claimed invention, it would give the applicant an unwarranted advantage and the amendment is to be considered contrary to the requirements of Article 123(2) EPC (see G 1/93, point 16 of the reasons).

1.12.2 In the present case, the disputed disclaimer is a feature providing necessarily a technical contribution to the claimed subject-matter since it excludes beta-nucleating agents generally known in the art to induce crystallization of polypropylene homo- and copolymers in polyolefin compositions, as already indicated by the name of the class of compounds and as also shown for instance in D1 itself (paragraph 11) and in D10 (paragraphs 69-74), whereby the presence of crystals has an undisputable effect on the chemical and mechanical properties of the composition. Therefore, the disclaimer, by modifying the technical characteristics of the matrix phase of the polyolefin composition of claim 1, necessarily gives the appellant an unwarranted advantage by restricting the claimed subject-matter to a group of polyolefin compositions having specific technical characteristics and properties. Therefore, even taking into account the exception in decision G 1/93, the disclaimer in question constitutes an amendment that contravenes the requirements of Articles 123(2) EPC.

First to third auxiliary requests

2. Admittance

2.1 The first to third auxiliary requests were filed by the appellant on 20 April 2017, after the reply to the statement of grounds of appeal by the respondent on 21 October 2014. Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion is exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

2.2 Claim 1 of the first auxiliary request differs from claim 1 as granted in that the wording "which polyolefin composition comprises" has been replaced by "which polyolefin composition consists of" and in that the disclaimer "wherein the composition does not contain beta-nucleating agent" has been removed.

2.3 Such amendments were introduced in order to look for a solution to the disclaimer issue which was the central point on which revocation was based. Therefore there was no justification not to file appropriate requests at the outset of the appeal proceedings. Moreover, the amendments do not provide a clear solution to the issue, since, in spite of the introduction of the expression "consists of", the presence of the "comprising" language in the definition of the matrix phase and of the disperse phase, leaves strong doubts as to whether the presence of beta-nucleating agents is excluded. Under these circumstances and in particular in view of the need for procedural economy, the Board finds it appropriate to exercise its discretion by not admitting the first auxiliary request into the proceedings.

2.4 The subject matter of claim 1 of the second and third auxiliary requests was reformulated as a process for preparing a polyolefin composition consisting of meltmixing 90 to 99 wt% of a heterophasic propylene copolymer base resin with 1 to 10 wt% of inorganic filler, based on the propylene copolymer at temperatures from 175°C to 250°C, and cooling and crystallizing the melt. The heterophasic propylene copolymer of that composition mentioned in claim 1 contains a matrix phase (a) and a disperse phase (b) defined by the same open formulation as that used in claim 1 of the first auxiliary request.

2.5 The situation is therefore the same as the one detailed for the first auxiliary request in point 2.3 above.

2.6 In addition, the process of claim 1 of the second and third auxiliary requests sets out that the amount of 1 to 10 wt% in inorganic filler meltmixed with 90-99 wt% of the heterophasic propylene copolymer is based on the propylene copolymer. Claim 1 as granted did not specify that the amount in inorganic filler was based on the propylene copolymer. On the contrary, claim 1 as granted implied that the amount in inorganic filler and that of the heterophasic propylene copolymer were both based on the polyolefin composition as a whole. As a result, the extent of the modifications performed in the second and third auxiliary requests appears to raise further issues of Article 123 EPC (paragraphs 2 and 3) and/or Article 84 EPC that were not part of the discussion before the opposition division and that have been raised for the first time in appeal proceedings.

2.7 Under such circumstances the Board finds it appropriate to exercise its discretion by not admitting the second and third auxiliary requests into the proceedings.

Fourth and fifth auxiliary requests

3. Admittance

3.1 The fourth and fifth auxiliary requests were filed by the appellant on 30 May 2017, just three days before the oral proceedings. Such late filed amendments are not admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

3.2 Claim 1 of the fourth and fifth auxiliary requests corresponds to the process for preparing a polyolefin composition of claim 1 of the second and third auxiliary requests respectively, further amended in that the heterophasic propylene copolymer, the matrix phase (a) and the disperse phase (b) are defined by a closed formulation and in that the matrix phase (a) consists of "a propylene homopolymer with up to 5 mol% of ethylene and/or at least one C4-C8 alpha-olefin". As to the definition of the matrix phase (a) now part of claim 1 of both requests, the limitation to a propylene homopolymer seems is not in line with the fact that the polymer can still contain substantial amounts of ethylene or C4-C8 alpha-olefin comonomers, thereby raising serious doubts as to whether claim 1 refers to a homopolymer or a copolymer, amounting to an issue of lack of clarity (Article 84 EPC). This issue, together with the issue relating to the basis for the calculation of the amount in inorganic filler relating to the second and third auxiliary requests mentioned above in point 2.6, implies that the fourth and fifth auxiliary requests contain amendments that add further complexity to the case at the latest possible stage of the proceedings.

3.3 Apart from the fact that the amendments present in claim 1 of the fourth and fifth auxiliary request constitute a very late attempt to address an issue, the allowability of the disclaimer, that was already known to the appellant since the decision of the opposition division in 2013, the large number of amendments raises numerous issues relating to Article 123(2) and (3) EPC as well as Article 84 EPC which the Board and the other party could not reasonably be expected to deal with without adjournment of the oral proceedings. The fourth and fifth auxiliary requests are therefore not admitted into the proceedings according to Article 13(3) RPBA.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 287/14 (pdf) has European Case Law Identifier:ECLI:EP:BA:2017:T028714.20170602. The file wrapper can be found here. Photo "Selection" by VinceHuang obtained via Flickr under CC BY 2.0 license (no changes made).
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