Friday, March 06, 2015 T 2130/11: disclaimers and Art. 84 EPC: an inescapable trap?

Disclaimers are always a nice subject for a complicated and expensive appeal procedure and quite often result in "important" case law. In this appeal, which lies from a decision of the Opposition Division, claim 1 of the main request comprises a long disclaimer which tries to disclaim embodiments of a relevant Art. 54(3) prior art document. According to this Board, G1/03 defines that the disclaimer has to fulfill the requirement of Art. 84 EPC. G1/03 defines that the patent owner may not disclaim more than strictly necessary to be novel over the Art. 54(3) document. In order to disclaim all embodiments of the relevant Art. 54(3) prior art document, but not disclaim more than strictly necessary, the patent owner considered it necessary to introduce the long disclaimer. However, this disclaimer has to fulfill Art. 84 EPC. It seems to be an inescapable trap. How to disclaim not more than strictly necessary when the embodiments as disclosed in the Art. 54(3) document do not fulfill the requirements of the Art. 84 EPC (e.g. clarity and conciseness).
In this decision the Board refused the main request because the disclaimer did not fulfill the requirements of Art. 84 EPC (clarity). However, the Board formulated its decision in such a way that the requirements of G1/03 and Art. 84 EPC are not directly an inescapable trap.

Catchwords
 
The difficulty for the applicant or patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention. Not even a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, point 3 in the reasons, second paragraph, last sentence) may have as a consequence the watering down of one of the requirements of the EPC. The requirements of Article 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim (see point 2.9).
On the other side, the condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10).


Summary of Facts and Submissions
 
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Claim 1 of the main request corresponded to claim 1 as granted with the addition of a process step ("wherein (d) at least one reducing agent and (e) at least one oxidizing agent form a self-cure initiator system in which when (d) at least one reducing agent and (e) at least one oxidizing agent come into contact with each other a redox reaction takes place and initiates polymerisation, leading to curing or hardening of the composition"), of a limitation on the ratio of the first paste to the second paste ("from 1.05:1 (by volume) to about 20:1 (by volume)") and of a second disclaimer worded as follows:
"and with the further proviso that, with reference to Tables 1, 2, and 3 of WO 03/086328, the composition does not comprise,
a first paste (Paste A1) consisting of;6.9 wt % Water, 24.2 wt % HEMA, 0.076 wt % BHT, 38.1 wt % AA:ITA:IEM, 3.5 wt % BisGMA, 2.5 wt % KPS, 24.2 wt % Zr-Si Filler, and 0.5 wt % Aerosil R812S,and a second paste (Paste B1) consisting of;13 wt % Water, 8.7 wt % HEMA, 1.4 wt % ATU, 0.16 wt % TBDMA, 37.2 wt % FAS I, 37.2 wt % FAS II, 0.5 wt % TiO2, and 1.2 wt % Aerosil R812S,
or a first paste (Paste A2) consisting of;
6.8 wt % Water, 1.2 wt % KS, 23.9 wt % HEMA, 0.075 wt % BHT, 37.6 wt % AA:ITA:IEM, 3.4 wt % BisGMA, 2.1 wt % KPS, 23.9 wt % Zr-Si Filler, and 1.0 wt % Aerosil R812S,
and a second paste (Paste B1) consisting of;
13 wt % Water, 8.7 wt % HEMA, 1.4 wt % ATU, 0.16 wt % TBDMA, 37.2 wt % FAS I, 37.2 wt % FAS II, 0.5 wt % TiO2, and 1.2 wt % Aerosil R812S,
or a first paste (Paste A3) consisting of;
11.5 wt % Water, 18.9 wt % HEMA, 0.079 wt % BHT, 42 wt % AA:ITA:IEM, 3.6 wt % BisGMA, 2.4 wt % KPS, 21 wt % Zr-Si Filler, and 0.5 wt % Aerosil R812S,
and a second paste (Paste B2) consisting of;
11.4 wt % Water, 10.3 wt % HEMA, 1.4 wt % ATU, 0.16 wt % TBDMA, 37.6 wt % FAS I, 37.6 wt % FAS II, 0.5 wt % TiO2, and 1.1 wt % Aerosil R812S,
or a first paste (Paste A4) consisting of;
11.5 wt % Water, 1.1 wt % KS, 18.7 wt % HEMA, 0.078 wt % BHT, 41.5 wt % AA:ITA:IEM, 3.6 wt % BisGMA, 2.4 wt % KPS, 20.8 wt % Zr-Si Filler, and 0.5 wt % Aerosil R812S,
and a second paste (Paste B2) consisting of;
11.4 wt % Water, 10.3 wt % HEMA, 1.4 wt % ATU, 0.16 wt % TBDMA, 37.6 wt % FAS I, 37.6 wt % FAS II, 0.5 wt % TiO2, and 1.1 wt % Aerosil R812S,
or a first paste (Paste A5) consisting of;
11.2 wt % Water, 2.6 wt % KDHP, 0.8 wt % KS, 18.3 wt % HEMA, 0.076 wt % BHT, 40.6 wt % AA:ITA:IEM, 3.5 wt % BisGMA, 2.3 wt % KPS, 20.3 wt % Zr-Si Filler, and 0.5 wt % Aerosil R812S,
and a second paste (Paste B2) consisting of;
11.4 wt % Water, 10.3 wt % HEMA, 1.4 wt % ATU, 0.16 wt % TBDMA, 37.6 wt % FAS I, 37.6 wt % FAS II, 0.5 wt % TiO2, and 1.1 wt % Aerosil R812S,
the Water being deionised water,
HEMA being 2-Hydroxyethyl methacrylate containing 150 ppm 4-methoxyphenol as an inhibitor,
BHT being 2,6-Di-tert-butyl-4-methylphenol,
AA:ITA:IEM being a polymer made by reacting AA:ITA copolymer with sufficient 2-isocyanatoethyl methacrylate to convert 16 mole percent of the acid groups of the copolymer to pendent methacrylate groups, according to the dry polymer preparation of Example 11 of U.S. Pat. No. 5,130,347, AA:ITA being a copolymer made from a 4:1 mole ratio of acrylic acid:itaconic acid, prepared according to Example 3 of U.S. Pat. No. 5,130,347,
BisGMA being 2,2-Bis[4-(2-hydroxy-3-methacryloyloxy-propoxy)phenyl]propane,
KPS being potassium persulphate,
Zr-Si Filler being a silane-treated zirconia-silica (Zr-Si) filler prepared as described in U.S. Pat. No. 4,503,169,
Aerosil R812S being a fumed silica,
KS being potassium sulphate,
KDHP being potassium dihydrogen phosphate,
ATU being Allylthiourea,
TBDMA being 4-tert-Butyl dimethylaniline,
FAS I being a fluoroaluminiunsilicate [sic] glass powder having a surface area of 2.8 m**(2)/g that has been silane-treated with a liquid treatment solution, the treatment solution being prepared by combining 4 parts A174 g-methacryloxypropyl trimethoxysilane and 60 parts water, adding glacial acetic acid to a pH of 3.01,and stirring for 0.5 hours, in which the treatment solution is mixed with 100 parts of the glass powder and an additional 67 parts of water to provide a slurry, the pH of the slurry is adjusted to 7.0 by adding 5% ammonium hydroxide and stirred for 30 minutes, dried for 24 hours at 95°C, crushed, and sifted through a 74- micrometer sieve, and
FAS II being a fluoroaluminiunsilicate glass powder having a surface area of 84 m**(2)/g that has been silane-treated with a liquid treatment solution, the treatment solution being prepared by combining 8 parts A174 g-methacryloxypropyl trimethoxysilane and 60 parts water, adding glacial acetic acid to a pH of 3.01,and stirring for 0.5 hours, in which the treatment solution is mixed with 100 parts of the glass powder and an additional 67 parts of water to provide a slurry, the pH of the slurry is adjusted to 7.0 by adding 5% ammonium hydroxide and stirred for 30 minutes, dried for 24 hours at 95°C, crushed, and sifted through a 74- micrometer sieve".

Reasons for the Decision
 
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Main request - clarity and conciseness


2. Claim 1 of the main request includes a disclaimer meant to exclude five examples of document D3. Such disclaimer makes reference to 3 tables of D3, lists the specific compositions of the two pastes for each of the examples and defines the components of the pastes using the wording of D3, which includes for some of the components their method of production and references to other patent documents giving further information over such methods (point III, above).

2.1 Decision G 1/03 (supra) analyses in detail the allowability of disclaimers and with regard to their drafting and the requirements of Article 84 EPC states the following (point 3 in the reasons, third paragraph):
"In any case, the requirements of conciseness and clarity of Article 84 EPC are also applicable to claims containing disclaimers. On the one hand, this means that a disclaimer is not allowable if the necessary limitation can be expressed in simpler terms in positive, originally disclosed features in accordance with Rule 29(1), 1st sentence, EPC. In addition, a plurality of disclaimers may lead to a claim drafting which puts an unreasonable burden on the public to find out what is protected and what is not protected. As in respect of other problems of clarity, a balance has to be struck between the interest of the applicant in obtaining adequate protection and the interest of the public in determining the scope of protection with reasonable effort. If a claim containing one or more disclaimers does not meet the latter interest it cannot be allowed. On the other hand, the understanding of a claim may be considerably complicated if the terminology of the application-in-suit and of the anticipation differ and different, incompatible terms are used in the claim. Here, Article 84 EPC may require that the terminology be adapted in order to exclude what is necessary to restore novelty."

2.2 This passage makes it clear, if at all needed, that disclaimers cannot be considered as an exception to the requirements of Article 84 EPC, which must be fulfilled as in the case of any other feature of a claim.

2.3 Article 84 EPC defines the requirements of the wording of the claims, whose main purpose is to enable the protection conferred by the patent or patent application to be determined (G 2/88, OJ EPO 1990, 93, point 2.5 in the reasons).

2.4 The numerous references in the disclaimer to patent documents including D3 and further documents cited in its examples already on their own make it impossible for the skilled person to determine what falls and what does not fall under the claim without undue burden, therefore violating the requirements of Article 84 EPC.

2.5 On top of that, the references to the method of production for several of the ingredients of the composition make the wording of the disclaimer neither clear nor concise in the absence of any information on what the process features would imply on the corresponding product. While product-by-process features are under some circumstances allowable, this is more the exception than the rule and these features must in any case fulfil the requirements of Article 84 EPC as defined above (Case Law of the Boards of Appeal of the EPO, 7th edition 2013, II.A.7). In the present case, the definition of several of the components by means of detailed methods of production without any information on the effect of those features on the product renders it cumbersome, if not impossible, for the skilled person to determine whether a product falls or does not fall under the exclusion defined by the disclaimer.

2.6 Summing up, the cumbersome wording of the disclaimer is in itself neither clear, nor concise in view of the references to several patent documents and several methods of production. There can be no doubt that a positive feature defined in such a way would be neither clear, nor concise and there are no reasons which can justify a different approach when the same subject-matter is excluded. The fact that such a wording is used in some examples of a prior art document is in itself not a sufficient reason to make the wording clear. These examples are indeed the reason why the appellant is forced to introduce the disclaimer, but this necessity does not release him from the obligation that the claims must be clear and concise as provided by Article 84 EPC.

2.7 On that basis, claim 1 of the main request does not meet the requirements of Article 84 EPC in view of the introduced disclaimer and the main request is to be rejected.

2.8 The appellant argued that such a conclusion would be unfair, as the condition in G 1/03 (supra) that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, supra, point 3 in the reasons, second paragraph, last sentence) would render the allowability of a disclaimer dependent on the disclosure of the prior art, if this condition and the requirements of Article 84 EPC are strictly applied.

2.9 The Board considers that the difficulty for the applicant or patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention. Not even a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" may have as a consequence the watering down of one of the requirements of the EPC. As already stated above (see point 2.2), there can be therefore no doubt that the requirements of Article 84 EPC must apply for a disclaimer as for any other feature of a patent claim.

2.10 On the other side, the Board is of the opinion that the condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims.

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Order

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:T213011.20141202. The whole decision can be found here. The file wrapper can be found here. Photo obtained from freedigitalphotos.net.