T 2184/13 18-05-2017

Main request

Admittance of new objections

1. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted one month before the oral proceedings with letter of 18 April 2017 an objection of lack of novelty over the public prior use of the polymer Sumipex MG SS and an objection of inventive step based on document D4. This represents a change to the appellant's complete case as defined in Article 12(2) RPBA and its admittance may thus be considered at the Board's discretion under Article 13(1) RPBA, such discretion being exercised inter alia in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA adds that amendments to a party's case sought to be made after oral proceedings have been arranged may not be 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".

1.1 The objection of lack of novelty based on the alleged public prior use of the polymer Sumipex MG SS and already invoked in the notice of opposition was not elaborated during the oral proceedings before the opposition division, a reference being made to the opponent's written submission (see section 3 of the minutes) and also not pursued with the statement of grounds of appeal. The appellant was aware from the impugned decision that it was questionable whether the alleged public prior use had been proven beyond any reasonable doubt, because it had not been shown that Sumipex MG SS had been sold before the priority date, but also because evidence was missing that a GPC analysis of that polymer carried out before that date would show that it contained the amount of "1/5 component" specified in claim 1 of the patent in suit. Therefore the board considers that there was no justification for the appellant to wait until one month before the oral proceedings to provide additional evidence D1c, D1d, D1e and D1f in order to prove the alleged prior use of the polymer Sumipex MG SS. This is even more the case as both documents D1e and D1f, which are meant among others to show a GPC analysis of a product alleged to be Sumipex MG SS, are dated 26 November 2001 and 11 October 2001 and bear the same reference to a laboratory book as experimental evidence D2 concerning measurements made around the same period. Accordingly, there was no reason for the Board to consider that additional documents D1e and D1f were not readily accessible to the appellant when filing the statement of grounds of appeal, when document D2 had been already submitted before the opposition division.

1.2 As to the objection of lack of inventive step starting from D4, the appellant had been informed on page 14 of the rejoinder of the respondent that in the absence of cited prior art, there could be no hint to the solution of the present invention and that the background art discussed in the introductory part of the patent in suit did not point to the claimed solution, which background art was indicated by the appellant to include a reference to D4. Moreover, as outlined in section 3 below, it is common ground that inventive step is to be assessed having regard to the state of the art as defined in Article 56 EPC. It is also established practice according to the board of appeal case law that inventive is to be examined using the problem-solution approach, which is made on the basis of the available state of the art. Accordingly, the Board's communication which essentially pointed out in respect of the issue of inventive step that the analysis made by the appellant failed to convince, because contrary to the principle enshrined in Article 56 EPC and the established board of appeal case law, it was not made having regard to the state of the art, which also could be also inferred from the rejoinder of the respondent, cannot be taken as a justification to submit D4.

1.3 Moreover, although the content of D4 is briefly summarized in paragraphs [0003] and [0004] of the patent in suit, analysing inventive step starting from D4 would require a detailed analysis of its technical content and a proper comparison of the subject-matter of the present claims with the resin disclosed therein, in particular a determination of the content of the "1/5 component" for the resins used in D4 which content was not indicated by the appellant. The fact that the appellant admitted that D4 did not explicitly disclose the amount of "1/5 component" and submitted that it was very likely that resin 4 of D4 felt within the definition of claim 1, or alternatively was highly relevant for the issue of inventive step demonstrates that an objective assessment of the patentability based on D4 was not possible at the oral proceedings before the Board.

1.4 Consequently, the admission to the proceedings of the objections of lack of novelty in view of the alleged public prior use of the polymer Sumipex MG SS and lack of inventive step over D4 would raise new issues, requiring sufficient time for the respondent to reconsider their position and prepare appropriate lines of defense, meaning that the late-filed submissions of the appellant raised issues which the other party or the Board could not reasonably be expected to deal without adjournment of the oral proceedings. On that basis and considering the lack of justification for the late filing the above mentioned objections and new evidence D1c, D1d, D1e, D1f and D4 are not admitted pursuant to Article 13(3) RPBA.

Sufficiency of disclosure

2. Article 100(b) EPC stipulates that an opposition may be filed on the ground that the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. As for assessing the other grounds of opposition of lack of novelty and lack of inventive step of the invention, assessment of sufficiency of disclosure of the invention is made for the invention for which protection is sought. This follows from the consideration that - in accordance with Rule 43(1) EPC - the invention in the European patent application is defined by the subject-matter of the claims, i.e. the specific combination of features present in the claims, as emphasised in Opinion G 2/98 of the Enlarged Board of Appeal (OJ EPO 2001, 413; point 2 of the Reasons) (see also T0059/08 and T 0089/13). Thus, the question to be answered is whether a skilled person, on the basis of the information provided in the patent specification and, if necessary, using common general knowledge, is able to carry out the invention as claimed in its whole extent without undue burden.

2.1 The first line of argument of the appellant is that the subject-matter of claim 1 allows the use of cross-linkers such as ethylene glycol dimethacrylat which compound is according to the appellant's reading of paragraph [0014] to be used in an amount of at least 1.5 wt%, leading to a resin which is insoluble and therefore cannot be analysed with GPC, as evidence by D3.

2.1.1 As a preliminary remark, the appellant's objection confirms that the ability of a methacrylic resin to be measured with GPC is a requirement of the present claims, in line with the view of the respondent and the reasons for the contested decision. Accordingly, any assessment of the sufficiency of disclosure of the invention has to be made having regard to the required ability for the claimed resin that is should be measurable with GPC, i.e. that it should exhibit the required solubility in solvents conventionally used for that type of resins when carrying out GPC measurements.

2.1.2 The first sentence of paragraph [0014] of the specification reads as follows: "The content of another vinyl monomer unit copolymerizable with methyl methacrylate is 1.5 to 20 wt% based on the methacrylic resin". The appellant's reasoning is based on a mere linguistic analysis of that sentence and starts from the premise that any vinyl monomer other than methyl methacrylate must be used in said amount, including cross-linkers, for example ethylene glycol dimethacrylat mentioned in paragraph [0012]. Independently from the correctness of such linguistic analysis, it is rather necessary to address the technical meaning of paragraph [0014] in the context of the whole specification, in particular claim 1 and paragraph [0013]. Claim 1 unmistakably defines that the total amount of methyl methacrylate monomer units is from 80 to 98.5 wt.%, whereas the total amount of "the at least one different vinyl monomer unit copolymerizable with methyl methacrylate" is from 1.5 to 20 wt.%. Paragraph [0013] also confirms that these additional different vinyl monomers may be used alone or in combination. Accordingly, the sentence in paragraph [0014] which does not state that any other additional monomer is to be used in an amount of 1.5 to 20 wt.%, but was interpreted as such by the appellant, is merely understood by the skilled person as a repetition of the information provided in claim 1 and cannot be reasonably understood to mean that any vinyl monomer other than methyl methacrylate must be used in an amount of 1.5 to 20 wt.%, as it would among others necessitate less methyl methacrylate, contrary to the definition of claim 1.

2.1.3 Moreover, the group of exemplified additional different vinyl monomers listed in paragraph [0012] is not restricted to cross-linkers. Accordingly, the patent in suit allows mixtures of a cross-linker and at least a further additional monomer which is not a cross-linker, as long as their total amount is in the range of 1.5 to 20 wt.% and the resin fulfils the other requirements of claim 1, including its measurability with GPC. The Board has no doubt that the skilled person by reducing the amount of cross-linker, if necessary, would be able to provide resins which exhibit the required solubility in order to undergo GPC measurements.

2.1.4 Accordingly, the patent in suit does not teach the obligation to use at least 1.5 wt.-% of a cross-linker, let alone 4 or 10 wt.-%, like the resins prepared by the appellant with the experiments 1 and 2 of D3. Accordingly, evidence D3, which does not relate to a repetition of the teaching provided by the patent in suit, cannot demonstrate a lack of sufficiency of disclosure.

2.1.5 Contrary to the opinion of the appellant, neither the respondent, nor the opposition division held that only workable embodiments could be claimed and those which were not workable were outside of the scope of the claims. This interpretation of the finding of the opposition division and of the submissions of the respondent is based on the understanding by the appellant that each cross-linker such as ethylene glycol dimethacrylat must be used, in accordance with the specification, in an amount of at least 1.5 wt%, which however is a misreading of the technical information contained in the specification, as shown in above sections 2.1.2 and 2.1.3. Accordingly, the argument of the appellant that the views of the respondent were diametrically opposed to the purpose of the requirement for a sufficient disclosure cannot convince.

2.1.6 The further argument that the scope of the protection of the patent in suit would become broader with new developments in the GPC technic, since non soluble (meth)acryl resins might become then analysable, also fails on a pure legal reason, since the terms of a claim, including in the present case "measured by gel permeation chromatography (GPC)" are to be read as they would be by the skilled person at the relevant date (filing or priority) of the application, i.e. in the present case excluding meanings of GPC which would result from further developments of that analytical technic after said relevant date.

2.1.7 It follows from the appellant's submission that the appellant/opponent was given the possibility to address this issue during the oral proceedings before the opposition decision. Furthermore, although paragraph [0014] is not explicitly mentioned in the reasons for the decision, this issue was dealt with on page 8, lines 5-9 of the contested decision and therefore duly considered by the opposition division. Hence, the argument that the contested decision was taken in contravention of the right to be heard, because the opposition division did not take position on the above argumentation based on the meaning attributed to paragraph [0014] also fails to convince.

2.1.8 Consequently, the first line of argument of the appellant submitted in support of lack of sufficiency of disclosure cannot be successful.

2.2 The second line of argumentation of the appellant relates to the requirement that the claimed resins should comprises a defined amount of the "1/5 component", i.e. "a component having a weight average molecular weight of 1/5 or less of a peak weight average molecular weight (Mp) obtained from a GPC elution curve, based on the methacrylic resin component".

2.2.1 Having regard to the literal meaning of claim 1 and paragraphs [0016] and [0067] to [0069] of the specification, it is not disputed, and the Board has no reason to take a different view, that the "1/5 component" of the resin designates the polymeric chains of the resin which have a molecular weight lower than one fifth of the molecular weight value corresponding to the maximum intensity (Mp) observed on the GPC elution curve. Its amount is determined by computing the proportion of the surface area under the GPC elution curve that corresponds to those polymeric chains.

2.2.2 Although the definition of an amount of "1/5 component" might be unusual in the sense that it might not have been used before, it has nevertheless a concrete meaning, as shown in the previous paragraph. The respondent pointed to various passages of the patent in suit (in particular paragraphs [0029] to [0031]) giving instructions on how to prepare the claimed resins, in particular by mixing two resins (1) and (2) having different molecular weights, which resins are described in paragraphs [0027] and [0028]. The instructions contained in said passages essentially correspond to a description of the process defined in claim 6 of the patent in suit, which instructions are illustrated by the numerous examples shown in Table 3 on pages 20 and 21, the preparation of the exemplified resins consisting in the mixing of two separate resins of different molecular weight as explained in Table 2 on page 19. Having consideration to the meaning of the "1/5 component", the Board has not reason to consider that its amount could not be adjusted by a simple variation of the two resins to be mixed and their respective amounts.

2.2.3 Furthermore, the appellant did not submitted evidence meant to show that the skilled person by following the instructions given in the patent in suit could not be able to reproduce the resins prepared in the examples or even further resins by selecting other "different vinyl monomers" as those recited in paragraph [0012] of the specification. According to the case law (see Case Law of the Boards of Appeal, 8**(th) Edition, 2016, II.C.8) the objection of lack of sufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts. Accordingly, in the absence in the present case of substantiating facts and corroborating evidence in support of the objection that the teaching provided in the specification cannot lead to the claimed subject-matter without unreasonable effort, the second line of argument of the appellant amounts to mere speculations which cannot convince the Board.

2.3 The third line of argument of the appellant is that the subject-matter of claim 1 would encompass "single-polymers", i.e. resins which are not prepared by the mixing of two appropriate methyl methacrylate resins as taught in the patent in suit, and that the manner to obtain those "single-polymers" would be insufficiently disclosed. The finding in point 4.3 of the contested decision that neither the wording of the claims nor the description of the granted patent indicates that the methacrylic resins claimed can be obtained by preparation of a single resin is however not disputed.

2.3.1 According to the case law (supra, II.C.4.2 and II.C.4.4), an invention is in principle sufficiently disclosed if at least one way is clearly indicated enabling the person skilled in the art to perform the invention in the whole range that is claimed. In the present case the question to be answered in relation to sufficiency of disclosure is therefore whether the method of mixing two methyl methacrylate resins indicated in the patent in suit, in particular in paragraphs [0029] to [0031] and the various examples of the specification (as already indicated in above section 2.2.2) enabled the person skilled in the art at the date of filing of the patent in suit to prepare the claimed compositions without undue burden, if necessary, using common general knowledge, but not whether an hypothetical further way of preparing the claimed resins which is not addressed at all in the patent in suit might have been accessible to him. Accordingly, the issue of whether the claimed resins could have been prepared by synthesis of a single polymer is of no relevance for the present case and at most might concern a further development of the invention described in the patent in suit, the sufficiency of disclosure of which might need to be addressed only in the framework of a corresponding patent application. Hence, the third line of argument of the appellant with respect to sufficiency of disclosure cannot convince either.

2.4 Consequently, the Board concludes that the patent in suit discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Inventive step

3. As prescribed in Article 56 EPC evaluation of inventive step is made having regard to the state of the art. The state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application, or alternatively before the date of priority claimed (Articles 54(2) and 89 EPC). Apart from the objection made starting from D4 submitted shortly before the oral proceedings before the Board, but which was not admitted into the proceedings (see sections 1.2 to 1.4 above), the original submissions of the appellant in respect of inventive step did not refer to any prior art, let alone evidence in this respect and there is no reason for the Board to consider that such prior art would be part of the common general knowledge in the art. Any objective analysis of inventive step in order to show that the claimed subject-matter would be arrived at in an obvious way by the skilled person having regard to the prior art necessitates at least a precise indication of the starting point used by the skilled person (the closest prior art) and an explanation as to why the skilled person, having regard to the context in which that starting point is disclosed, would be motivated to operate a modification of that starting point which would result in the subject-matter as claimed. The objection of the appellant which does not refer to a specific starting point belonging to the prior art and does not provide a technical description thereof, let alone provide evidence for the existence of such starting point, can only be based on an inadmissible ex post facto analysis made with the knowledge of the invention and therefore must fail. Consequently, no case has been made out that the claimed subject-matter lacks an inventive step.