Tuesday, 7 June 2016

T 239/13 - Wait to be poisoned, or not

Today and tomorrow, oral proceedings for the referral G 1/15 "poisonous priorities/ poisonous divisionals / poisonous parents" (by T 557/13, pdf; amicus curiae briefs) are held. This opposition case is stayed in view of the relevance of the referral for the validity of priority for its independent claim.

Summary of Facts and Submissions
I. The present appeal is from the decision of the Opposition Division to reject the opposition against the European patent No. 1 926 809
II. Claim 1 as granted reads as follows:
"1. A granule, for use in the preparation of a basic laundry detergent shading composition, said granule having improved storage properties comprising:
a dye selected from the group consisting of acid dyes, basic dyes, solvent dyes, hydrolysed reactive dyes, reactive dyes and disperse dyes and having a dye chromophore type of diarylmethane, triarylmethane, diazines, oxazines, or thiazines
and, a component selected from the group consisting of:
a cogranulent, a binder and a coating,
characterised in that the component is an acidic component."
III. An opposition was filed on the grounds of lack of novelty and lack of inventive step (Article 100(a) EPC) and insufficiency of disclosure (Article 100(b) EPC).
The documents relied upon by the parties include the following:
D1: EP 1 577 374 A1;
D1a: US 2005/0215460 A1 (family member of D1 in English, published on 29.09.2005);
D6: Pages from "Water soluble polymers Sokalan**(®) Tamol**(®) Lupasol**(®") by BASF The Chemical Company;
D7: WO 2006/053598 A1, published on 26 May 2006 and filed on 05.09.2005;
D8: "The Chemistry of SYNTHETIC DYES" by K. Venkataraman, volume II, 1952, Academic Press Inc., New York, pages 707 to 711;
D9: "DYEING AND CHEMICAL TECHNOLOGY OF TEXTILE FIBRES" by E.R. Trotman, fourth edition, 1970, Griffin London, pages 368 to 373; and
D10: Experimental data filed as annex 1 to the Proprietors' letter of 29 August 2012.
IV. In its decision, the Opposition Division came inter alia to the following conclusions (points II.a.i and II.b to d):
- "The priority of the contested patent [22.09.2005] was found to be invalid, since some of the dye groups were not present in the priority document. Moreover, the priority was silent on the chromophore types...Since the priority is not valid, D7, which was published after the priority date of the patent, becomes a document by virtue of Article 54(2) EPC and may therefore be relevant for the inventive step issue."
- "...the requirements of Article 83 EPC are met."
- " ...the subject-matter of claim 1 of the instant patent is novel over the documents filed by the opponents."
- "...The opposition division is also of the opinion that D7 represents the closest prior art...a combination of any of D8 or D9 with D7 is based on hindsight...the term "having improved storage properties" was a limiting feature of claim 1. The opposition division came to the finding that the limiting character of this feature would exclude respective overall basic granules from the scope of the claims, since such granules indeed would not show the required improved stability within the meaning of the patent-in-suit...this limitation of the scope of the claim would ensure that it is inventive over its entire scope."
V. In its statement setting out the grounds of appeal of 9 April 2013, the Appellant requested the revocation of the patent, maintaining inter alia that the invention was not sufficiently disclosed and that the subject-matter of claim 1 lacked an inventive step in the light of D7 in combination with documents D6 and/or D1/D1a. D7 was prior art pursuant to Article 54(2) EPC since the priority date claimed for the patent in suit was not valid. Together with the statement, the Appellant filed further documents labelled D11 to D14 in support of its inventive step objection, supposed to show that it had been well known that dyes as used according to claim 1 at issue loose their colour, or are unstable, when exposed to alkali.
VI. In its reply of 5 August 2013, the Respondent defended the patent as granted (main request). However, together with the reply, it also filed an amended set of claims as first auxiliary request. It expressed its agreement with the findings in the decision under appeal and relied on the written submissions filed before the first instance.
VII. [...]
VIII. The parties were summoned to oral proceedings in accordance with their auxiliary requests to this end.
IX. The oral proceedings before the Board were held on 22 September 2015.
The parties maintained their requests presented in writing.
They were first heard regarding the meaning of claim 1 as granted and the issue of sufficiency of disclosure. The Board then expressed its opinion that the patent was sufficient.
Thereafter the parties were heard as regards inventive step in the light of D7. In this connection, the Appellant requested a stay of the proceedings until the decision of the Enlarged Board of Appeal be issued in case G 1/15. The Respondent raised no objection in this respect.
X. The Appellant's arguments, submitted in writing and orally, included the following:
Sufficiency of disclosure
- The claimed invention was thus not sufficiently disclosed.
Request for stay of the proceedings
A stay of the proceedings was expedient considering the potential bearing of the Enlarged Board's findings in referral case G 1/15 on the proper assessment of inventive step in the light of D7.
XI. The Respondent's arguments of relevance here can be summarised as follows:
Sufficiency of disclosure
- Therefore, the claimed invention was sufficiently disclosed.
Stay of the proceedings
The Respondent did not object to a stay of the proceedings as requested by the Appellant and provided no further comments in this respect.
Reasons for the Decision
Stay of the proceedings
1. As argued by the Appellant at the oral proceedings, the findings of the Enlarged Board in case G1/15 regarding the issue of "partial priority", referred to it under Article 112(1)(a) EPC by decision T 557/13 of 17 July 2015, may have a bearing on the proper assessment of inventive step in the light of D7, in particular regarding the question to which extent the subject-matter claimed D7 may be relied upon as prior art.
2. Under these circumstances the Board considered it appropriate not to take any final decision, but to stay the appeal proceedings pending the outcome of case G1/15, in accordance with the corresponding request of the Appellant, which was not objected to by the Respondent.
For these reasons it is decided that:
The appeal proceedings are stayed until a decision be issued by the Enlarged Board of Appeal in case G 1/15.

This interlocutory decision T 239/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T023913.20150922. The file wrapper can be found here. Photo "Bad Solution - 
Just because it is a solution doesn't mean it is a good solution." by Ian Weddel obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. Tufty the Cat gave a summary of the (first day of the) oral proceedings:

    According to his blog, "At the end, the Chairman announced that a decision would be made "as soon as possible" (which raised a small ripple of laughter from the audience), but that this would be by November this year".