T 1252/07 – Seeing Things Differently

Some time ago, we have seen a decision where a Board adopted an unreasonably harsh stance on A 123(2): even a combination of the main claim and a dependent claim was considered to violate A 123. But the Boards are far from unanimous on this topic; the present decision shows a case where a Board proved much more open-minded. 

[2.1] [… C]laim 1 [of the main request] was amended in comparison to claim 1 [as granted]. The question must, thus, be answered whether or not the main request comprises subject matter corresponding to an amendment of the claims in the course of opposition or appeal proceedings which would justify that its compatibility with the requirements of the EPC, including with regard to the provisions of A 123 (2), be examined by the board (see G 9/91 [19]).

Claim 1 corresponds to the combination of claim 13 [as granted], with claim 1 [as granted] and part of claim 6 [as granted]. Considering that claim 13 [as granted] was depending on “any preceding claim” and that claim 6 [as granted] was depending on “any one of claims 1 to 3”, the mere combination of these three claims does not amount to a substantive amendment of the subject matter claimed in the granted patent and does not correspond, therefore, to an “amendment” in the sense of G 9/91 [19].

This conclusion is in agreement with constant case law of the boards of appeal see e.g. T 381/02 [2.3; 2.3.7, 2.3.8], as well as the other decisions cited therein. Although this passage of T 381/02 addressed the question of whether the clarity of amendments made to granted claims may be examined for the first time at the appeal stage, the same reasoning applies and the same conclusion would be reached regarding whether a board may examine for the first time during the appeal proceedings if amendments of granted claims fulfil the requirements of A 123(2).

Considering that in the present case claim 13 [as granted] has, however, not been combined with claim 6 [as granted] as a whole but only with a part of it (three specific compounds have been extracted out of the list of ten products), it remains to be examined whether or not this modification could amount to an amendment in the sense of G 9/91 [19], i.e. if it may represent a substantive amendment of the granted claims.

Claim 6 [as granted] was written as a list of ten individualised compounds and is, therefore, formally equivalent to a series of ten separate dependent claims, each directed to one these ten embodiments. Hence, the combination of claim 13 [as granted] with any of these ten compounds corresponds to a mere rewording of the granted claims, taking account of their dependency, which does not modify the substance of the subject matter claimed. There is in particular no new teaching or new information provided to the skilled person and created through this amendment. Contrary to the objection of the appellant the board does not consider that this amendment has led to the creation of a new “genus” as compared to claim 6 [as granted] or represents an “arbitrary selection” within its ambit. The amendment merely amounts to the combination of claim 13 [as granted], dependent on claim 6 [as granted], itself dependent on claim 1 [as granted], with three compounds listed as independent alternatives in claim 6 [as granted]. The board does not consider this splitting of claim 6 [as granted] as representing a substantive amendment.

In reaching its conclusion the board in particular disagrees with the appellant that an unallowable amendment emerges from the fact that in claim 1 [as granted] the terms oligomeric HALS and polymeric HALS have been maintained as such, whereas the term high molecular weight HALS has been replaced by three compounds of claim 6 [as granted]. Indeed, the amendment merely amounts to the restriction of the subject matter covered by one of the three independent embodiments of claim 1 [as granted].

The appellant has objected in this regard that the original classification of claim 1 [as granted], which distinguished between polymeric, oligomeric and high molecular weight HALS, was not clear because of the lack of an accepted definition for these terms.

Even if this might be true, it does not affect the conclusion of the board since the partitioning of claim 6 [as granted] which was done is not related to whether or not a specific category of HALS may be attributed to the ten specific compounds. The amendment made, indeed, does not change the subject matter claimed which is related to oligomeric or polymeric HALS and only restricts that part which is directed to the high molecular weight HALS to three compounds already recited as individual embodiments in claim 6 [as granted] and which, in the board’s view indisputably correspond to high molecular weight HALS in the sense of the patent in suit.

The argument of the appellant in this regard, that it would not be clear that the three selected compounds are high molecular weight HALS, did not convince the board. From their chemical structure, these compounds may at most be considered as dimers, i.e. the smallest possible form of oligomers. There is, however, no evidence on file demonstrating that the skilled person would consider such dimers as oligomeric HALS, as argued by the appellant. The board is further of the opinion that the skilled reader, to which the patent is addressed, would consider from the information provided in the patent that such compounds fall under the category of high molecular weight HALS. This, incidentally, also corresponds to the findings of the opposition division […].

The appellant has further criticised in this respect that the compound recited at lines 57-58 of claim 6 [as granted] (“Reaction products of (…)”) may either be a monomeric, oligomeric, or polymeric HALS depending on the reaction conditions used.

Even if this might be true, this does not imply that the amendment made by the respondent corresponds to an “arbitrary selection”: it only restricts the high molecular weight HALS of claim 1 [as granted] to three of the compounds corresponding to this definition in claim 6 [as granted]. Whether a further compound may also be a high molecular weight HALS is irrelevant.

The board further notes that the three categories of HALS (oligomeric, polymeric, high molecular weight) were already recited in claim 1 [as granted] so that their clarity may not be objected to at this stage of the proceedings for the same reasons as above (G 9/91) and because lack of clarity is not a ground for opposition according to A 100.

To conclude, the replacement of the term high molecular weight HALS of claim 1 [as granted] by three compounds of claim 6 [as granted] corresponding to such HALS is not an “amendment of the claims (…) of a patent in the course of opposition or appeal proceedings” in the sense of G 9/91 [19] which would have had to be fully examined as to its compatibility with the requirements of the EPC, in particular with A 123(2) in the present case.

Finally, the board reached the same conclusion regarding the dependent claims 2-15 [as granted].

Therefore, the objections of the appellant with respect to A 123(2) EPC are rejected.

If you wish to download the whole decision, you can do so here.