Tuesday, 2 October 2018

T 1399/13 - On the size of the hole


The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a 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 with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition 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).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.

Summary of Facts and Submissions
I. The appeal lies with the interlocutory decision of the opposition division posted on 26 April 2013 concerning maintenance of the European patent No. 1456257 in amended form.

II.-IV, [...]

V. The decision of the opposition division concerning maintenance of the patent in suit in amended form was announced at the oral proceedings on 24 January 2013. The decision was based on a main request filed with letter of 26 October 2010, on a first auxiliary request filed with letter of 20 November 2012 and on a second auxiliary request filed during the oral proceedings before the opposition division.

[...]

The decision under appeal as far as relevant to the present decision can be summarised as follows:

(a) The main request [...]

(b) The first auxiliary request contained an additional independent claim which contravened Rule 80 EPC. Also, while the application as originally filed provided a basis for the amendment in claim 1 regarding the addition of the specific initiator when the pressure in the polymerization reactor dropped, claim 1 disclaimed more than was disclosed in the examples of D8. Thus, the disclaimer of claim 1 did not fulfil the criteria set out in G 1/03 (OJ EPO 2004, 413). Also, the application as originally filed did not provide a basis for the feature relating to the addition of the surfactant in claim 3 of the first auxiliary request. On that basis the requirements of Article 123(2) EPC were not met.

[...]

VI. The proprietor (appellant) lodged an appeal against that decision. The statement setting out the grounds of appeal was based on a main request and auxiliary requests 1 to 4. The main request corresponded to the main request filed on 26 October 2010. Auxiliary request 1, which is relevant to the present decision, contained three claims, claim 1 being the sole independent claim and reading (deletion in strikethrough and additions in bold compared to the main request):

"1. Process wherein one or more initiators are used to polymerize a mixture containing one or more monomers of which one is vinyl chloride monomer, wherein at least part of the initiators is added to the polymerization mixture at the reaction temperature when the pressure in the polymerization reactor is dropping due to the depletion of the vinyl chloride monomer, [deleted: with the proviso that the polymer formed is not subject to radio frequency dielectric heating in the presence of additional organic initiator,] and wherein the initiator added when the pressure in the polymerization reactor is dropping is an organic peroxide having a half life of from 0.0001 hour to 1 hour at the polymerization temperature,
with the proviso that the polymer formed is not subject to radio frequency dielectric heating in the presence of additional organic initiator, and 
with the further proviso that a process in which vinyl chloride monomer is polymerized in suspension at 57°C in the presence of 1,000 ppm of polyvinyl alcohol by either (i) metering 330 ppm diisobutanoyl peroxide over 12 minutes and subsequently 670 ppm diisobutanoyl peroxide over 220 or 245 minutes or (ii) metering 480 ppm 1-(2-ethylhexanoylperoxy)-1,3-dimethylbutyl-1-peroxypivalate over 15 minutes and subsequently 1,120 ppm 1-(2-ethylhexanoylperoxy)-1,3-dimethylbutyl-1-peroxypivalate over 120 minutes, all amounts based on vinyl chloride monomer and all peroxides metered as 0.8% w/w methanol solution, is excluded."

VII. In their replies to the statement of grounds of appeal, opponents 1 and 2 (respondents 1 and 2) requested that the appeal be dismissed. [...]

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

IX.-X. [...]

XI. Oral proceedings were held on 11 July 2018 in the absence of respondent 2 as announced with letter of 5 June 2018.

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

Main request

[...]

Auxiliary request 1

[...]

Disclaimer

(h) Auxiliary request 1 provided a clear and concise disclaimer that satisfied the criterion set out in T 2130/11, that is the disclaimer did not lead to an arbitrary reshaping of the claim. Claim 1 disclaimed the processes in terms of the polymerization temperature, the presence of polyvinyl alcohol, the initiators used, the initiator amounts and dosing times. The disclaimer in this request thus contained all details related to the essence of the invention, namely the manner of dosing initiator and no arbitrary choices were made.

(i) All other details disclosed in the experimental section of D8 had no effect on the addition of initiator during the pressure drop and were therefore not needed. Claim 1 of auxiliary request 1 provided the appropriate balance between the legitimate interest of the proprietor of obtaining adequate protection on the one hand and the interest of the public in understanding what was and what was not protected on the other hand. The disclaimer therefore met the requirements of G 1/03 and was allowable.

(j) The question of when the heating phase started in the examples of D8 was not relevant to the clarity of the disclaimer.

[...]

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

Main request

[...]

Auxiliary request 1

[...]

Disclaimer

(h) The disclaimer in claim 1 of auxiliary request 1 removed more than necessary to restore novelty over D8. It did not indicate the volume of the reactor disclosed in D8, nor did it specify the mixing equipment used, the repeated purges with nitrogen, the volume of water used in the polymerization process and specific details regarding the polyvinyl alcohol and vinyl chloride used. Furthermore, the disclaimer did not contain details regarding the point in time at which the initiator was metered in the reactor whereas the metering of the initiator started at the end of the heating phase in example 1 of D8. Finally the temperature control of that reactor was not limited in the disclaimer whereas D8 concerned a cold-start process only. Documents D12 and D22 showed that these parameters were essential to the polymerization process. Since these parameters were not part of the disclaimer, claim 1 of auxiliary request 1 did not satisfy the criteria set out in decision G 1/03 in order to meet the requirements of Article 123(2) EPC.

(i) In addition, claim 1 was defined by five disclaimers corresponding to the absence of radio frequency dielectric heating as well as the four examples of D8. That level of complexity added to claim 1 infringed Article 84 EPC.

(j) Besides, the absence of a definition of when the metering started in the process of claim 1 further added to the lack of clarity of the claimed subject matter.

[...]

XIV. The appellant requested that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the claims of the main request filed on 26 October 2010 before the opposition division, or on the basis of the claims of one of auxiliary requests 1 or 2 filed with the statement of grounds of appeal, or on the basis of the claims of auxiliary request 3 filed with letter of 8 May 2018, or on the basis of the claims of one of auxiliary requests 4 or 5, filed as auxiliary requests 3 and 4 with the statement of grounds of appeal.

Respondent 1 requested that the appeal be dismissed. It also requested that auxiliary requests 4 and 5 not be admitted into the proceedings, and if they were admitted, that the case be remitted to the department of first instance.

Respondent 2 requested that the appeal be dismissed and that the auxiliary requests filed with the statement of grounds of appeal not be admitted into the proceedings.

Reasons for the Decision

Main request

1. Priority claim and novelty in view of D8

1.1 The opposition division concluded that the priority of D1 was not validly claimed and that D8, which was as a result a document according to Article 54(3) EPC, and in particular its example 1, was novelty destroying for claim 1 of the main request (points 3.1 and 3.2 of the reasons).

1.2 Example 1 of D8 discloses the polymerization of VCM under continuous metering of Trigonox 187 as organic peroxide initiator (paragraphs 23 and 25). Trigonox 187 is the organic peroxide initiator used in the examples of the patent in suit. It was not disputed that at 57°C, the polymerization temperature according to example 1 of D8, Trigonox 187 has a half life in the claimed range of 0.0001 h to 1 h. That can also be derived from the data provided on pages 3, 6 and 7 of D9. Furthermore, the description made of example 1 in D8 does not mention the use of a radio frequency dielectric heating. Thus the only question that remains in view of example 1 of D8 is whether it discloses that the initiator was added to the polymerization mixture at the reaction temperature when the pressure in the polymerization reactor is dropping due to the depletion of the vinyl chloride monomer.

1.2.1 According to Table 1 of D8, 330 ppm of peroxide are added to the reactor over 12 min and 670 ppm are subsequently added over 220 min (232 min of peroxide dosage in total). Also, 200 ppm of PVA are added to the reaction mixture before heating and 800 ppm are subsequently metered in 220 min together with the peroxide. D8 discloses that the constant pressure time is 195 min (3 h and 15 min) before the pressure dropped in the course of the polymerization. Since the peroxide initiator is added for a total period of 232 min, it is deduced that some organic peroxide initiator is added during the pressure drop phase in the reactor.

1.3 It is clear from the statement of grounds of appeal (point 3) that it was not contested that example 1 of D8 anticipates claim 1 of the main request. It was also not disputed in appeal that document D1, from which priority is claimed, does not disclose the whole breadth of the subject matter of claim 1 of the main request. Rather, the question that needs to be answered in appeal is whether the first priority date of the patent in suit (21 December 2001, the filing date of US 342434 P or D1) is valid at least for the subject matter of the main request that is also disclosed in example 1 of D8.

1.4 D1 (claim 1) relates to a process for polymerizing vinyl chloride monomer and optionally further monomers using one or more organic initiators, with at least part of said initiators being dosed to the polymerization mixture at the reaction temperature, characterized in that essentially all of the organic initiator used in the polymerization process has a half life of from 0.0001 h to 0.05 h at the polymerization temperature.

1.4.1 In the whole of D1, a pressure drop can only be derived from the description of the polymerization process of example 1. That example discloses the polymerization of VCM at 68°C under continuous dosing of Trigonox 187 as organic peroxide initiator. According to Table 1 of D1, 500 ppm of peroxide are added over 30 min and subsequently 300 ppm/h during 2.5 h, meaning that in total, peroxide is added over 3 h in the course of the polymerization process. The constant pressure time during that polymerization is 2.5 h, after which the pressure drops (page 8, line 16). It can thus readily be deduced therefrom that the pressure drops (after 2.5 h) while peroxide is still being added to the reactor (up to 3 h).

1.4.2 Since example 1 belongs to D1 from which priority is claimed, it can form the basis for a priority claim for claim 1 of the main request but only inasmuch as the disclosure in example 1 of D1 is concerned. Indeed, in decision G 1/15 (OJ EPO 2017, A82) the Enlarged Board of Appeal has acknowledged the concept of partial priority and has decided that "entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document" (see Order). In point 6.4 of decision G 1/15, the Enlarged Board of Appeal explained that, in assessing whether a subject-matter within a generic claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first enjoying the priority corresponding to the invention disclosed in the priority document, the second being the remaining part not enjoying this priority.

1.4.3 The process of example 1 of D1, which forms the basis of the priority claim, differs however from that of example 1 of D8 in several instances. The first difference is in the temperature of the reactor which corresponds to the polymerization temperature. While that temperature is 68°C in D1 (page 7, line 27), it is set to 57°C in example 1 of D8 (page 6, line 29). That difference in temperature is significant for the polymerization process since it impacts the half life of the peroxide in the reaction medium and has some repercussions on the quantity of initiator ultimately dosed and the amount of heat released in the course of the polymerization process (D1: page 1, line 15 to page 2, line 8 and D8: page 2, lines 9-21). Furthermore, example 1 of D8 discloses a polymerization process in which the polyvinyl alcohol (PVA) added as a protective colloid is dosed with the initiator, which has an impact on the disclosed process since by metering both the initiator and the protective colloid, the efficiency of the initiator is improved, increasing the polymerization rate, shortening the polymerization times and increasing the pressure drop rate (paragraph 6 of D8). By contrast, the protective colloid is added to the reactor prior to the initiator in D1 (page 7, lines 21-23). These differences in the polymerization processes according to example 1 of D1 and example 1 of D8 are therefore significant for the course of the process and the phase of the pressure drop. The priority claim that can be derived from example 1 of D1 does therefore not correspond to the disclosure of example 1 of D8. As a result, example 1 of D8 is novelty destroying for claim 1 of the main request.

1.4.4 The present situation differs from case T 665/00 cited by the appellant in support of its position. In T 665/00 the subject matter of an alleged prior use which fell within the scope of the claims of the patent was described in the priority document. As the priority document did not necessarily describe all the subject matter claimed, the question was whether different elements of a patent application could have different priority dates. In the present situation, the question to be answered pertains instead to the differences between the document from which priority is claimed (in particular an example therein) and the examples of a document cited against the novelty of the claimed subject matter. The conclusion reached in T 665/00 does therefore not apply to the present case.

1.5 The same conclusion on novelty applies to claim 1 of the main request in view of example 2 and the comparison examples of D8 and in view of D8' which content is the same as that of D8. The main request does therefore not satisfy the requirements of Article 54 EPC.

Auxiliary request 1

1.6 Auxiliary request 1, which contains three claims, was filed by the appellant with the statement setting out the grounds of appeal, i.e. pursuant to the requirements of Article 12(1) and (2) RPBA. The claims of that request are based on the first auxiliary request filed with letter dated 20 November 2012 (claims 1 and 2) from which however independent claim 3 was deleted and replaced by a dependent claim 3 which was already part of the granted claims since it corresponds to its dependent claim 5. The presence of two independent claims was one of the reasons why the opposition division rejected the first auxiliary request (under Rule 80 EPC, contested decision, point 4.1). Auxiliary request 1 filed in appeal can therefore be seen as having been filed in an attempt to address the decision of the opposition division regarding Rule 80 EPC, while not substantially changing the subject matter of the request. The Board sees on this basis no reason to hold auxiliary request 1 filed with the statement setting out the grounds of appeal inadmissible pursuant to Article 12(4) RPBA.

2. Sufficiency of disclosure

[...]

3. Disclaimer

3.1 Claim 1 of auxiliary request 1 is defined by a disclaimer referring to a step of radio frequency dielectric heating and a disclaimer meant to exclude four examples of D8. While the first disclaimer was present in claim 1 of the application as originally filed, the second disclaimer is intended to exclude the examples of D8, a document according to Article 54(3) EPC (see point 1. above).

3.2 The disclaimer made in view of the examples of D8 in claim 1 of auxiliary request 1 essentially defines the type of polymerization (suspension), its temperature (57°C), the presence of a specific protective colloid (1000 ppm of polyvinyl alcohol) and the metering of specific peroxides in the course of the polymerization process which contains two parts, a first part (i) intended to disclaim example 1 as well as its comparison example reported in Table 1 of D8 and a second part (ii) intended to disclaim example 2 and its comparison example as reported in Table 2 of the same document.

3.2.1 The disclaimer in claim 1 of auxiliary request 1 is crafted around the main features of the polymerization process according to D8, a polymerization process whereby an organic initiator and a protective colloid are metered at the polymerization temperature (claim 1 and paragraph 6). It is formulated so as to exclude the aspects shared by the examples first (polymerization type, monomer, reaction temperature, presence of polyvinyl alcohol), followed by the aspect relating to the metering of the specific peroxide initiators (parts (i) and (ii)) as disclosed in Tables 1 and 2. As such, that disclaimer is not only concise, it is also specific, since it ultimately discloses polymerization processes performed at one temperature only (57°C), involving one monomer (VCM) and concerning specific organic peroxides (diisobutanoyl peroxide and 1-(2-ethylhexanoylperoxy)-1,3-dimethylbutyl-1-peroxypivalate).

3.3 Respondent 1 considered that the disclaimer added to claim 1 in view of D8 did not fulfil the criteria set out in G 1/03 (OJ EPO 2004, 413) and was therefore not allowable under Article 123(2) EPC on the grounds that the formulation chosen excluded more than what was disclosed in the examples of D8 and therefore more than necessary to restore novelty. In that respect, D8 disclosed a number of parameters that had not been included in the disclaimer and that were found to be necessary to the definition of the disclaimer by respondent 1: the volume of the reactor disclosed in D8, the mixing equipment used in the reactor, the repeated purges with nitrogen, the volume of water used in the polymerization process, specifics regarding the polyvinyl alcohol and vinyl chloride used (pages 8 and 9 of the reply to the statement setting out the grounds of appeal of respondent 1). Moreover, claim 1 of auxiliary request 1 lacked clarity since the formulation of the disclaimer did not indicate the starting point of the metering of the organic peroxide that was disclaimed and the number of disclaimers in claim 1 rendered that claim unclear.

3.3.1 With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10. In particular, the difficulty for a 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 with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition 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).

3.3.2 The consequence of this, as clearly set out in T 2130/11, is that there are situations 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.

3.3.3 It is the view of the present Board that the formulation of the disclaimer with respect to D8 as present in claim 1 of auxiliary request 1 corresponds exactly to this situation in that even if the disclaimer in its present form may be seen as formally removing more than is strictly necessary to restore novelty over D8, it avoids clarity problems and cannot be held to be in contradiction with the spirit of G 1/03 as it does not lead to an arbitrary reshaping of the claims. In particular, a formulation of the disclaimer including all the data and process steps as disclosed in the experimental part of D8 (paragraph 23) would indeed deprive the claim of its conciseness and render its wording unclear (Article 84 EPC). Besides, while it is not disputed that the features of the process of the examples according to D8 that have not been included in the formulation of the disclaimer in claim 1 may ultimately have an effect on the course of the polymerization, it has not been shown how the absence of these features in claim 1 of auxiliary request 1 may lead to an arbitrary reshaping of the claims, nor has the Board any reason to consider that it is the case.

3.4 With respect to the presence of separate disclaimers in claim 1 of auxiliary request 1, the subject matter they concern, radio frequency dielectric heating and the examples of D8, was not shown to be related in any way or create any uncertainty as to what is disclaimed. The Board does therefore not find that their presence in claim 1 of auxiliary request 1 infringes the requirements of Article 84 EPC.

3.5 The Board concludes from the above that the disclaimers present in claim 1 of auxiliary request 1 do not contravene the requirements of Articles 123(2) and 84 EPC.

4. Admittance of D18, D19, D20, D21 and the simulations provided with the letter of 11 June 2018

[...]

5. Novelty in view of D6

[...]

5.4.7 The Board concludes therefore that claim 1 of auxiliary request 1 is novel in view of D6.

6. As the respondents did not present any further objections against auxiliary request 1 there is no need for the Board to decide on any other issue.

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 with the order to maintain the patent in amended form on the basis of the claims of auxiliary request 1 filed with the statement of grounds of appeal and after any necessary consequential amendment of the description.




This decision T 1399/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T139913.20180711The file wrapper can be found here. Photo "Hole in the Ground" by Eirik Refsdal obtained via Flickr under CC BY 2.0 license (no changes made).

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* T 2130/11, reasons 2.9 and 2.10:

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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