Tuesday, 20 May 2014

T 2026/10 - What discloses the prior art?

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This is an appeal against a decision of the Examining Division to refuse the patent because lack of novelty over document D1 (US4235716A).

D1 discloses an example that seems to fall within the scope of protection of filed claim 1. Consequenlty, Examining Division considered the filed claim not novel. It is undisputed that D1 discloses the example. However, according to the applicant, the material discussed in D1 is not enabled, and, thus, D1 does not belong to the prior art.

The Boards of Appeal decided to teach the parties to the Appeal and us (the reader) how the principle of “enablement of the prior art” works.

Citations from the decision:

Summary of Facts and Submissions


II. The European patent application was refused by a decision of the examining division, posted with letter dated 4 May 2010, on the ground of lack of novelty having regard to document 
D1: US-A-4 235 716.
Said document disclosed in example 2 a porous silica gel having an average particle size (d50) of 0.5 µm, a pore volume of 1.0 ml/g, a pore width of 10 nm, and a specific surface of 400 m2/g (see column 5, lines 1 to 10). Although D1 discloses neither a method of manufacturing nor a supplier for said porous silica gel, the examining division argued that the inventors of D1 had either bought the product or produced it themselves. It was therefore considered as comprised in the state of the art and anticipated the subject-matter of claim 1.


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

"1. A dispersion comprising porous inorganic oxide particles, wherein the particles have

a) a median particle size in the range of 0.05 to 3 mym; and

b) porosity such that when an aqueous dispersion of the particles is dried at least 0.5 ml/g of pore volume as measured by BJH nitrogen porosimetry is from pores having a pore size of 50 nm (600 Å) or smaller."


Reasons for the Decision


2. Novelty

2.1 Relevant content of D1

2.1.1 It is undisputed that D1 discloses in column 5, lines 1 to 19 (example 2), a porous silica gel having an average particle size (d50) of 0.5 µm, a pore volume of 1.0 ml/g a pore width of 10 nm and a specific surface of 400 m2/g.
It is also an undisputed fact that D1 neither explicitly nor implicitly teaches how to manufacture said porous silica gel and that D1 does not mention an origin of or a supplier for said porous material.

2.1.2 In the contested decision the examining division decided that the product in question, namely the porous silica gel, belonged to the state of the art. The porous silica gel had possibly been bought or produced by the authors of D1. Since they used it only as a reagent in their process, they had no reason to disclose how to manufacture it.

2.1.3 This reasoning is partly based on the assumption that the mention of a particular product having specific physical and chemical properties was sufficient to make it available to the public.

2.1.4 However according to the appellant the availability of the porous silica product was not self-evident.
The appellant pointed to the publication date of D1 and argued that in 1978 no method was known which could have resulted in such a material. Preparing the claimed product was a non-trivial task. It had taken the appellant's experts numerous years of research to develop a process for manufacturing it.
According to the appellant, claim 19 of the present application described for the first time a process for the preparation of the claimed dispersions of porous inorganic particles, which process includes the steps of forming a slurry, milling of said slurry, creating a supernatant phase and a settled phase and removing the supernatant phase to separate the two phases and to obtain the settled phase as a final product having the specified parameter values. The appellant stressed that in 1978 (date of filing of D1) no method was known which could have resulted in such a material. The appellant was also not aware of a product such as the silica gel of example 2 of D1 being offered or sold on the market. Consequently, the silica gel of D1 could not have been purchased.
As a consequence, D1 did not make available to the public a teaching helping the skilled person to manufacture said porous silica material.

2.2 Information gap in D1

2.2.1 Article 83 EPC states that a European patent application must disclose the invention in a manner sufficiently clear and complete to be carried out by a person skilled in the art. In accordance with the case law, for the requirement of Article 83 EPC to be met, the skilled person must be able to carry out the invention without undue burden and without the exercise of inventive skill, on the basis of what is disclosed in the application and by using the general knowledge, (see T 694/92, OJ EPO 1997, 408; and T 612/92 of 28 February 1996, Reasons points 11 to 13).

2.2.2 According to the jurisprudence (see for instance T 1026/02, of 5 March 2004, Reasons point 3; T 206/83, OJ EPO 1987, 5; and T 158/91 of 30 July 1991, Reasons point 2.2), the same criteria are to be applied for judging sufficiency of disclosure of a patent application or of a piece of prior art. A prior art document whose teaching does not meet the sufficiency criteria is not enabling and must be disregarded as a prior art (see T 1026/02 of 5 March 2004, Reasons point 10).


2.3 Objections against the interpretation of D1 by the examining division

2.3.1 Firstly, in the board's judgement, it is improper to brush aside the appellant's detailed arguments by saying that it was "most plausible" that the product in question was "simply purchased" (see the contested decision, page 4, lines 1 to 4). In the board's view, these statements are mere speculative assertions which are unsuited for refuting the appellant's arguments, which had been presented at the oral proceedings before the examining division and in earlier written submissions.
It would have been incumbent on the examining division to produce evidence for their assertions, for instance by showing that the product in question was indeed commonly available, or that its manufacture (or at least the manufacture of porous inorganic particles having very similar characteristics) belonged to the general knowledge. A decision on novelty should not be taken on the basis of plausibility considerations and assumptions which are not supported by evidence or arguments.

2.3.2 Secondly, even assuming the product was bought - for which there is no evidence -, it is clear that in the absence of information about the source, the document would still not be enabling.

2.4 Consequences
In view of the above, and on the basis of the information available to the board and judging from its face value, document D1 only mentions the particular porous silica gel, but neither allows to conclude that the particular porous silica gel was available on the market nor is the skilled person taught its manufacture. Therefore, in this case, D1 is not enabling and said particular porous silica gel does not belong to the prior art.
As a consequence, the subject-matter of claim 1 in accordance with the main request must be considered to be novel having regard to D1 (Article 54 EPC). The contested decision must therefore be set aside.


For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T202610.20140502. The whole decision can be found here. The file wrapper can be found here.


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