T 1007/09 – Talking With Asterisks

In its decison revoking the opposed patent, the Opposition Division (OD) found the main request (patent as granted) as well as the three auxiliary requests on file to lack inventive step.

The Board did not agree and maintained the patent as granted. It also considered the question of whether the appeal fee should be reimbursed:

*** Translation of the French original ***

[9] Pursuant to R 111(2) the decisions of the EPO which are open to appeal shall be reasoned.

According to the established case law a lack of reasoning of a decision constitutes a substantial procedural violation within the meaning of A 113(1) (cf. inter alia T 763/04; T 1182/05; T 246/08).

In the present case the impugned decision comprises a blank paragraph (paragraph 6.2.3).

The opposition division is of the opinion that ***********************

It is obvious that the OD intended to give the reasons justifying its dismissal of the second auxiliary request, but it did not do so, whereby it kept the appellant in the dark as to the reasons for the dismissal.

Therefore, the impugned decision is affected by a substantial prodedural violation. As the appeal is granted, it is necessary to order the refund of the appeal fee pursuant to R 103(1)(a).

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T 193/07 – Purely Hypothetical

Both the patent proprietor and opponent 2 (!) filed an appeal against the decision of the Opposition Division (OD) revoking the patent under consideration.

In what follows the Board discussed the admissibility of the opponent’s appeal:

[2.1] According to A 107 “any party to the proceedings adversely affected by a decision may appeal”.

[2.1.1] The first instance opposition proceedings led to the revocation of the patent in its entirety as requested by opponent 2 […]. The order of the decision of the OD thus fully complies with the request of opponent 2.

[2.1.2] A party is only adversely affected if the order of the appealed decision does not comply with its request. Hence, in the present case, [opponent 2] is not adversely affected by the decision of the OD.

[2.2] [Opponent 2] argued that A 107 did not expressly further specify the meaning of “adversely affected”. In a case like the present one, with no possibility of continuing appeal proceedings initiated by an appeal of the patent proprietor if the latter withdraws its appeal, procedural situations could occur which could adversely affect the respondent-opponent in parallel or related national infringement or nullity proceedings.

[2.2.1] However, the board observes that [opponent 2] has not identified any specific reasons for which it considered itself to be adversely affected on the day it filed its notice of appeal. [Opponent 2] merely presented purely hypothetical considerations concerning potentially disadvantageous situations that may occur (in the future) in related national litigation proceedings. These considerations have no legal relevance under A 107, first sentence.

[2.2.2] In this connection, the board also observes that the possibility of an anticipatory cross-appeal is not foreseen by the EPC (see e.g. decision T 854/02 [2.2]). A respondent-opponent which is not adversely affected by a decision revoking the patent is thus not entitled to file an appeal for the sake of acquiring an independent appellant status instead of the status of a respondent (party as of right).

[2.3] Moreover, the board’s conclusion in the present case is in accordance with the established jurisprudence of the boards of appeal, according to which in cases where the order of the decision of the OD is the revocation of the patent, an opponent who requested revocation of the patent in its entirety is not “adversely affected by” said decision within the meaning of A 107, first sentence, irrespective of the reasons given in the decision. Reference can e.g. be made to decisions T 854/02 [3.1-2], T 981/01 [5-6], T 1147/01 [2], T 1341/04 [1.2(i),1.3] and T 473/98 [2.2-8]. Whether or not the OD, in its decision to revoke the patent on the ground of lack of inventive step, dealt with all the novelty objections raised by opponent 2 is thus not relevant in the assessment of the admissibility of the appeal of [opponent 2]. The board sees no reason for deviating from the established case law in the present case.

[2.4] Summarising, in the board’s judgement, [opponent 2] was not entitled to appeal against the decision of the OD, since it was not “adversely affected by” said decision within the meaning of Article 107 EPC.

[2.5] Therefore, the appeal of [opponent 2] is not admissible.

[2.6] Consequently, the board considered the submissions of [opponent 2] from the point of view of its status as a respondent to the appeal of the patent proprietor.

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T 305/07 – Time Does Not Heal All Wounds

Evidence that has been considered inadmissible by the Opposition Division (OD) because it had been filed belatedly will not necessarily be admitted in appeal proceedings only because it is re-filed together with the statement of grounds of appeal. This is what the patent proprietor in the present case had to find out when filing an appeal against the decision of the OD revoking his patent.

[5] The [patent proprietor] filed the experimental evidence which had not been admitted by the OD, i.e. experimental evidence originally included in the letters dated 26 June 2006 and 21 July 2006, with its statement of the grounds of appeal and requests its admission.

[6] The board is not convinced by the [patent proprietor’s] argument that “the EPO and the Opponent have now had ample time to evaluate the experimental data and the Opponent has had time, should it wish to, to repeat any experiments”. The board does not see why the [opponent] should react to experimental evidence which is not “in” the proceedings (even if it could be expected that it would be re-filed in appeal proceedings). The [patent proprietor’s] argument overlooks the difference between filing and admissibility.

[7] The admissibility of late-filed evidence during appeal proceedings is specifically regulated in Article 12(4) RPBA stipulating that, without prejudice to the power of the board to hold inadmissible evidence which was not admitted in the first instance proceedings, everything presented by the parties with the statement of the grounds of appeal shall be taken into account by the board if and to the extent it relates to the case under appeal.

[8] The present claims differ from those dealt with by the OD and in relation to which it considered the experimental evidence as irrelevant. Thus, in the board’s view, Article 12(4) RPBA, first half sentence does not apply here, but Article 12(4) RPBA, second half sentence is to be considered. In particular, the question arises whether, and if so to what extent, the experimental evidence relates to the case under appeal.

[9] According to the [patent proprietor] the data originally presented in the letter of 26 June 2006 demonstrate not only that alkali metal salts are indeed suited to reduce trisulfide variants in a recombinant product, but also that this effect can be applied to other peptides. However, the board considers that what the [patent proprietor] aims to demonstrate is sufficiently demonstrated by the data in the patent, in particular those of Figure 2. The evidential weight of the data originally submitted with the letter of 26 June 2006 is moreover questionable, inter alia, since there is no information as to when, during the recombinant production process, the salt was applied, i.e. during or after fermentation.

[10] According to the [patent proprietor] the experimental data as originally submitted with the letter dated 21 July 2006 was filed in order to exclude the mechanism of trisulfide reduction disclosed in document D1 as the mechanism by which the alkali metal or earth alkali metal salts of the present invention operate. However, feature or features relating to a mechanism are absent from claim 1 and therefore it is not necessary to prove that mechanism.

[11] The board thus comes to the conclusion that none of the experimental evidence submitted with the statement of the grounds of appeal is relevant to the present case. Therefore, it cannot be considered to “relate” to it. Hence, in accordance with Article 12(4) RPBA, second half sentence the board decides not to admit the experimental evidence filed with the statement of the grounds of appeal.

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T 468/09 – Don’t Focus On The Negative

The patent proprietor filed an appeal after the Opposition Division (OD) had revoked the patent under consideration because it found the disclosure not to be sufficient within the meaning of A 100(b).

Claim 1 of the main request before the Board read:

A urinary catheter assembly comprising at least one urinary catheter (1) having on at least a part of its surface a hydrophilic surface layer (6) intended to produce a low-friction surface character of the catheter by treatment with a liquid swelling medium prior to use of the catheter and a catheter package (7, 16, 29, 34, 42, 46, 51, 51’) made of a gas impermeable material and having a cavity (11, 18, 39, 48, 53) for accommodation of the catheter (1, 58, 69), characterized in that the cavity accommodates said liquid swelling medium for provision of a ready-to-use catheter assembly.

The appellant argued that the gist of the claimed invention was to provide an assembly for intermittent catheterisation, wherein the catheter could be withdrawn from the package in a condition which was suitable for insertion into the urethra. In order to put the invention into practice, the skilled person had to provide the urinary catheter with a hydrophilic surface layer, a package made of a gas impermeable material, to place the catheter and a liquid swelling medium in the package and to close the package. Urinary catheters with hydrophilic surface layers were known at the priority date of the patent in suit, and so were gas-impermeable packages. On the basis of the disclosure of the opposed patent and his common general knowledge, the skilled person would have no difficulty in carrying out the catheter assembly in the claimed manner, no matter if the liquid swelling medium were to be placed in direct contact with the catheter surface or in a storage body from which it was released. The subject-matter of claim 1 of the main request covered both embodiments and did not require storage of the catheter for years. The stability of the catheter coating was not an essential feature in the present patent.

Opponent 1 pointed out that the invention as claimed was restricted to the embodiments in which the coating was in contact with the liquid swelling medium (water) from the time of manufacture until use of the catheter, which could be up to 5 years later. It was essential that the coating be capable of being stored for the duration of this period without deterioration. Although not specified in claim 1, the recommended time period was, however, implicit. The subject-matter of claim 1 did not include the embodiment in which coating and liquid were kept apart until immediately before use, by confining the liquid in a spongy body. At the time the patent was filed, a skilled person was not able to produce without undue burden a hydrophilic catheter coating that could withstand wet storage for the required shelf life, i.e. avoiding deterioration of the coating. The patent was silent on how to solve this problem with the coating, namely how to provide a pre-wetted catheter assembly which could be stored for up to 5 years, typically 36 months, thus resulting in a long term preservation of the low friction surface characteristic of the catheter until its use. The evidence provided by the appellant clearly showed that the prior art coatings were not suitable. None of the catheters disclosed in the prior art cited in the patent was intended for wet storage. There was no indication in the patent of how the hydrophilic coating catheter could be made.

Opponent 2 argued along similar lines.

[4.1] A 100(b) states 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. The requirement is the same as for A 83, which addresses the European patent application before grant.

It is established case law that sufficiency of disclosure must be assessed on the basis of the patent specification as a whole, including the description and the claims. Moreover, the disclosure is only regarded as sufficient if it allows the invention to be performed in the whole range claimed, i.e. for all embodiments falling within the ambit of the claimed subject-matter.

[4.2] Essentially, claim 1 of the main request defines a urinary catheter assembly comprising a urinary catheter and a catheter package;

• the urinary catheter has on its surface a hydrophilic surface layer (coating);
• prior to use, the hydrophilic surface layer is brought into contact with a liquid swelling medium to produce a low-friction surface;
• the catheter package is made of a gas impermeable material and has a cavity;
• the cavity accommodates the catheter (preamble of claim 1) and the liquid swelling medium (characterising portion of claim 1) for provision of a ready-to-use catheter assembly.

Claim 1 of the main request covers the two embodiments which are disclosed in the patent specification.

[4.3] In a first embodiment, shown in Figures 1 and 2, the catheter package 7 is formed by two sheets 8 and 9 of gas impermeable material welded together along a seam 10 (joint) so as to define a cavity 11 for accommodating a catheter tube 2 and a compartment 12, spaced apart from the cavity by an transitional section 13 […] for accommodation of a liquid swelling medium confined in a storage body 14 made of a spongy or gel-like material […].

The catheter and the spongy body are arranged in the package prior to welding the sheets of gas impermeable material together, in order to form the urinary catheter assembly. This clearly means that the package 7 encloses both the cavity and the compartment […].

Prior to use of the catheter, the hydrophilic surface layer 6 (coating) is prepared for activation of its low friction character by squeezing the liquid out of the body in order to allow it to flow into the cavity and to bring the catheter into a ready-to-use condition […].

This first embodiment, therefore, corresponds point by point to the wording of claim 1 in suit and, contrary to [opponent 1’s] assertion, falls within the scope of said claim. In particular, the hydrophilic coating of the catheter which is accommodated in the cavity is activated “prior to use” by treatment with the liquid swelling medium (preferably water - see paragraph [69]) within the cavity for provision of a “ready-to-use” catheter assembly.

This embodiment can readily be carried out on the basis of the information given in […] the description. This was not contested by the respondents either.

[4.4] In a second embodiment, not shown in the figures, the spongy body 14 is not used. The liquid is introduced into the package during the assembly operation, prior to the welding of the joint. In this case, the compartment for the liquid swelling medium is integrated with the cavity for accommodation of the catheter, the coating being prepared and activated immediately after completion of the production process when the liquid has been introduced into the package […].

This embodiment is made possible due to the gas impermeable characteristic of the material of the package. As explained in […] the patent, this should be understood as a material sufficiently tight to avoid diffusion by evaporation of the liquid, so as to prevent the coating from drying out and to preserve its low friction character for a long time […]. A period exceeding the shelf life of the catheter is recommended, which could be up to 5 years but is typically 36 months.

It should be noted here that the disclosed range is not limited at the lower end and therefore does not exclude much shorter periods of e.g. a few months, though such interpretations should be ruled out which do not make any technical or commercial sense, such as a zero length period or a period of a few days. Moreover, the time period of 36 months is given as an example (“typically”; “recommended”). The important matter is to keep the coating activated and the catheter in a ready-to-use condition “at all times” […], i.e. within the time period corresponding to the above defined range.

Claim 1 does not mention any duration for the preservation of the coating, i.e. the period between the time of activation of the coating and the time at which a catheter is used. Therefore the subject-matter of claim 1 also covers the second embodiment since “prior to use” corresponds in that case to the activation of the coating at the time the catheter assembly is produced. From that time onwards, the catheter assembly is “ready-to-use”, in accordance with the wording of a claim 1.

[4.5] As can be derived from the patent specification, the problem underlying the claimed solution is principally to avoid diffusion by evaporation of the liquid swelling medium in order to protect the activated coating from drying out […]. This result is achieved by the gas impermeable characteristic of the material constituting the package, not by a characteristic of the coating. Therefore, the respondent’s arguments based on maintenance of the coating stability and of its coherence over time by avoiding its dissolution in the liquid are irrelevant and not convincing.

The same is true for the problem formulated by the OD of avoiding the coating reacting with the material inside the bag or dissolving into water.

[4.6] It results therefrom that all the discussions about the characteristics of the coating appear to be irrelevant for the assessment of sufficiency of disclosure and of the reproducibility of the catheter assembly as claimed. The same applies to the document cited by both parties in support of their arguments regarding the properties of the coating.

Having regard to the broad definition of claim 1 and given that the gas impermeable material of the package provides sufficient tightness against evaporation of the liquid for a period of time which could vary considerably (“up to five years”), the known catheters referred to in […] the patent specification could be suitable in any case and on the basis of this disclosure the invention can be carried out, even if such catheters may suffer from some other deficiencies. A 100(b) does not require that the best mode be performed.

Where a disadvantage of an invention could (possibly) prevent its use, this is not an obstacle to reproducibility provided that the otherwise desired result was achieved by the technical teaching disclosed in the patent (see also T 881/95). This is obviously the case here since the only problem addressed by the contested patent is confined to preventing evaporation of the liquid from the package and subsequent drying of the catheter coating, and this is solved by the provision of an appropriate material for the package. The coating stability of a catheter immersed for a long period of time is not an issue. Under the circumstances, it matters little whether, at the priority date of the contested patent, catheter coatings capable of withstanding water storage over a long period of at least 36 months were available or not.

[4.7] For the foregoing reasons, the requirements of A 100(b) are satisfied.

The case was then remitted to the OD for further prosecution.

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T 2166/10 – Missing Pages

Missing pages are one of the recurring problems to be solved in paper D of the EQE, but the problem also occurs in real life and may have dramatic consequences if it is not dealt with properly.

The patent proprietor filed an appeal against the decision of the opposition division (OD) revoking his patent which had been granted on the basis of a Euro-PCT application.

In its decision the OD held, inter alia, that, as concerns the description, only description pages 1, 2 and 26 to 43 were entitled to the international filing date of 4 December 2001 and that the subject-matter of the patent as granted extended beyond the content of the application as filed. A main request that the patent be maintained as granted was therefore not allowable.

Here is what the Board had to say on this case:

[1.1] The appellant argued that the international application, on which the patent in suit was based, was completely filed on the date of filing, i.e. 4 December 2001, and that it therefore included, inter alia, description pages 3 to 25. Further, the appellant argued that, since the arguments given by the opponent in support of the opposition grounds were solely based on the assumption that these description pages were not part of the application as filed, the opponent’s arguments had to fail and, hence, that the opposition had to be rejected.

[1.2] In the present case it is therefore necessary to determine which documents made up the application as filed and, in particular, whether or not the description pages 3 to 25 were part of the application as filed on 4 December 2001.

[1.3] In this respect the board notes that in the proceedings before the IPEA, in the present case the EPO, the applicant submitted on 3 July 2002 a Demand under Article 31 PCT together with amendments under Article 34 PCT. In the accompanying letter the applicant made it clear that the amendments were to be taken into account by the IPEA only if the Receiving Office (RO), in the present case the International Bureau (IB), were not to grant a petition which was pending before the RO and in which the applicant requested that it be held that the international application was completely filed on 4 December 2001, i.e. including, inter alia, the description pages 3 to 25. The amendments under Article 34 PCT consisted of “new pages” 3 to 25, i.e. new paragraphs [0006] (second part) and [0007] to [0057]. In a table, the applicant indicated for each of these “newly added pages” and for each paragraph thereof which parts of the application as originally filed, i.e. description pages 1, 2 and 26 to 43, Figures 1 to 23, and claims 1 to 52, provided a basis.

The board further notes that, subsequently, in a communication dated 6 August 2002 the IB informed the applicant and the IPEA that following a decision:

• the originally filed pages 3 to 25 of the description were held to be null and void and were to be disregarded;
• the international filing date was corrected to read 4 December 2001;
• the earliest priority date, i.e. 5 December 2000, was reinstated; and
• the international application would be published as such, i.e. without pages 3 to 25 of the description, with an indication to this effect.

In accordance with this decision, the application was published without the above-mentioned description pages 3 to 25 and with international filing date 4 December 2001. The description as published included the following note between pages 2 and 26: “ATTENTION: PAGES 3-25 WERE MISSING UPON FILING”.

The International Preliminary Examination Report (IPER), dated 20 March 2003, was based, inter alia, on description pages 1 to 45 “as received on 01/03/2003 with letter of 25/02/2003” and which were annexed to the IPER. More specifically, paragraphs [0001] to [0005](first part) of the annexed description correspond to paragraphs [0002] to [0006](first part) of the application as published, whereas paragraphs [0005](second part) to [0008] and [0021] to [0068] of the annexed description respectively correspond to paragraphs [0006](second part) to [0009] and paragraphs [0010] to [0057] of the description pages as filed by the applicant by way of amendment under Article 34 PCT. The renumbering of the paragraphs was due to deleting paragraph [0001] and inserting a new section concerning the prior art, namely paragraphs [0009] to [0020].

On entry of the European phase, the applicant indicated that the proceedings before the EPO as elected Office were to be based on the documents on which the IPER was based.

With the communication under R 51(4) EPC 1973 the applicant was informed that the examining division (ED) intended to grant a patent on the basis of, inter alia, description pages 2 to 5 and 7 to 45 as annexed to the IPER. An annex to the communication included bibliographic data of the patent application, including, inter alia, 4 December 2001 as the date of filing of the application. By filing the translations of the claims and by paying the fees for grant and printing, the applicant approved the text intended for grant. The decision to grant was issued on 2 November 2007 and mentioned 4 December 2001 as the date of filing.

The above observations were not contested by the appellant.

[1.4] From the above, it follows that the IB held that the description as originally filed, i.e. on 4 December 2001, did not include pages 3 to 25 and that, in accordance with the applicant’s conditional request, the IPEA took into account the amendments submitted with the Demand, which resulted in the addition to the description as filed of new paragraphs [0005](second part) to [0008] and [0021] to [0068].

[1.5] In the board’s judgement, there can therefore be no doubt that the preliminary examination and the patent in suit were partly based on new description pages which had been submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. The board therefore concludes that the application on which the patent in suit is based was not completely filed on the international filing date, i.e. 4 December 2001, in that it did not include description pages 3 to 25.

[1.6] The question of whether or not the decision given by the IB acting as RO, in which it was held that the description pages 3 to 25 were not filed on the date of filing of the international application, was correct does not alter the above facts and findings based thereon and, hence, need not be further considered by the board in the present decision. In fact, the board observes that neither before the EPO acting as IPEA in the international phase nor before the EPO ED in the regional phase did the applicant raise the issue of the missing pages or request a correction of the filing date (cf. J 03/00). Nor did the applicant contest that the preliminary examination or the patent to be granted was partly based on new description pages which were only submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. Nor subsequently did the applicant file a request for correction of an error in the decision to grant.

[1.7] The appellant’s argument that the arguments submitted by the opponent in support of the opposition grounds had to fail for the reason that they were solely based on the wrong assumption that description pages 3 to 25 were not part of the application as filed, is therefore not convincing.

[1.8] The board concludes that the OD was correct when it held that the application as filed did not include the description pages 3 to 25. Further, the board notes that the OD gave a detailed reasoning as to why the opposition ground set out in A 100(c) prejudiced the maintenance of the patent as granted and that in the statement of grounds of appeal the appellant did not submit any arguments against this reasoning. Since the board does not see any reason to deviate from the reasoning given by the OD, it concludes that the opposition ground set out in A 100(c) prejudices the maintenance of the patent as granted.

[1.9] The appellant’s sole request is therefore not allowable.

[2] The sole request not being allowable, it follows that the appeal must be dismissed.

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J 22/10 – Foreign Affairs

The present case was triggered by the late payment of extension fees.

The applicant had requested entry into the European phase on February 5, 2008 ; in the request the “extension” box was ticked but no extension states were explicitly mentioned:

In a letter dated April 7, 2008, the applicant’s representative stated that all five extension states were to be designated; he requested the EPO to debit five extension fees and five late payment surcharges from his deposit account.

In this letter, the representative cited the Guidelines, chapter A-III 12.2 and pointed out that the underlying interpretation of the Extension Agreements was incorrect.

According to him, the only sensible interpretation of the Extension Agreements with Albania, Macedonia and Serbia was “to use R 85a(2) EPC 1973 as was”. As there was no counterpart to R 85a(2) EPC 1973 under the EPC 2000, the old rule had to be applied. The representative also offered arguments why late payment or further processing should be available for Bosnia & Herzegovina and Croatia. So the extension fees for all five extension states could be paid at least two months late with payment of late payment surcharges or further processing fees.

The Receiving Section (RS) of the EPO was not persuaded : it refused the late payment and ordered the refund of the fees. It stated that the procedure for payment of the extension fee were not be governed by the EPC. All provisions relating to the implementation of the extension were established by national law in the relevant (extension) state, whereas the extension agreements merely established the amount of the extension fee. The respective national laws of the extension states became obsolete with the entry into force of the EPC 2000 and the deletion of R 85a (2) EPC 1973.

The applicant filed an appeal against this decision.

In compliance with earlier decisions on related matters, the Legal Board found itself to lack competence, and the appeal to be inadmissible:

[3] As noted by the Legal Board of Appeal in its communication dated 19 August 2011, the appeal proceedings are essentially concerned with the question whether such a denial of the RS is open to an appeal and, therefore, whether the appeal is admissible.

[3.1] According to the exhaustive provisions of A 106(1), only those decisions of the EPO may be contested which are taken by the departments listed therein, i.e. by the RS, Examining Divisions, Opposition Divisions and the Legal Division, acting within the framework of their duties under the EPC.

[3.2] The Legal Board of Appeal found in a number of cases that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (Extension Agreements) were not based on the EPC itself but solely based on the Co-operation Agreements between the EPO on the one hand and the extension states on the other hand; it, therefore, rejected the respective appeals as inadmissible (J 14/00; J 19/00; J 9/04; J 2/05; J 4/05).

[3.3] Starting from this, the following aspect is relevant in deciding the current case:

[3.3.1] It follows already from the very nature of the Extension Agreements relevant in these appeal proceedings (Albania, OJ EPO 1995, 803 and 1996, 82; Bosnia and Herzegovina, OJ EPO 2004, 619; Croatia, OJ EPO 2004, 117; Former Yugoslav Republic of Macedonia, OJ EPO 1997, 345 and 538; Serbia and Montenegro, OJ EPO 2004, 583, 2007, 406 and 2010, 10) that any decisions based on such international treaties do not fall within the scope of the EPC and, as a result of this, are not subject to the jurisdiction of the Boards of Appeal.

[3.3.2] The procedure for payment of the extension fees is determined by the Extension Agreements alone. Although there are certain parallels between the formal procedures of extension of protection under the Extension Agreements on the one hand and the designation of a contracting state under the EPC on the other hand (A 78(2) and A 79(2) EPC 1973, R 38(1) and R 39(1) EPC), the Extension Agreements form a legal system of their own that is distinct from the legal system created by the EPC.

References within the Extension Agreements to the EPC, in particular to the so-called period of grace under R 85a(2) EPC 1973 (in combination with A 79(2) EPC 1973, R 107(1)(d) EPC 1973 and the EPO Rules relating to Fees), do not override this fundamental distinction.

Consequently, the legal nature of any decision taken on the legal basis of the Extension Agreements remains within that legal system and does not extend to the legal system of the EPC.

[3.3.3] The Extension Agreements make it absolutely clear that references to provisions of the EPC are exhaustive and, thus, that there can be no corresponding application of other provisions, including those of A 106 et seq. concerning the appeals procedure.

Neither is there anything in the structure or legal nature of the Extension Agreements to support the appealability of the contested decision within the legal framework of the EPC. As bilateral agreements, the Extension Agreements essentially deal – exhaustively and strictly separated from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the respective national law and their relationship to national applications and rights based on the law on industrial property of the extension states.

Nor do the Extension Agreements provide for a transfer of jurisdiction on the EPO and its Boards of Appeal. Such a transfer could only have been established by an explicit and clear provision to this effect in the Extension Agreements. Particularly with regard to the principle of sovereignty of the extension states, there is no room for acknowledging an implicit transfer of jurisdiction from the respective national law and the national courts to the EPC and the Boards of Appeal.

[3.4] The Legal Board of Appeal is not competent to decide a case that is solely governed by a “foreign” legal system.

[4] All this has been brought to the appellant's attention by way of the communication of the Board dated 19 August 2011 to which the appellant chose not to reply. Having reviewed the facts and legal issues involved in this appeal case, the Board maintains the opinion already expressed in said communication and reiterated above.

[5] Since the contested notification of the RS dated 21 August 2009 refusing its request for late payment of the extension fee concerning the European patent application Nr. 06 752 688.9 is not open to an appeal according to A 106 the appeal has to be rejected as inadmissible.

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T 491/09 – Clairvoyance

Member of an Opposition Division consulting the DG3 oracle

The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form, based on the third auxiliary request, which had been filed during oral proceedings (OPs)

The opponent claimed that the OD should not have admitted this request into the proceedings.

Here is what the Board had to say on this matter:

[1.1] The Board notes that if the way in which a department of first instance has exercised its discretion on admitting requests filed during OPs is challenged in appeal, it is not the function of a Board to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A Board of Appeal should only overrule the way in which a department of first instance has exercised its discretion if the Board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII.E-6.6).

[1.2] The question therefore arises whether the OD exercised its discretion properly according to the above stated criteria.

[1.3] In chapter E-III, 8.6 of the Guidelines for Examination in the EPO is stated that in exercising its discretion according to R 116(1) and (2)

“the Division will in the first place have to consider ... the allowability of the late-filed amendments, on a prima facie basis. If these ... amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the Division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with ... the proposed amendments”.

Prima facie allowability

[1.4] It transpires from points 3 and 4 of the minutes of the OPs that the OD regarded the then final 3rd auxiliary request as prima facie overcoming the opposition grounds based on A 100(b) and A 100(c) (in combination with A 123(2)) and thus as prima facie allowable in these respects. The appellant argues, however, that the OD did not examine the prima facie clarity of the claims, which it should have.

[1.4.1] The Board observes in the first place that the minutes of the OPs before the OD are silent on any issue of clarity raised by the appellant as a hindrance to admitting the request in question. Also at the OPs before the Board the appellant could not recollect having made such an objection in this particular respect.

To the contrary, the minutes, page 3 state that “the opponent raised no other objections than those already discussed”, which clearly could lead the OD to assume that no further formal issues remained, nor that any new formal objections were raised.

Admitting this request in such circumstances can already for that reason alone not be criticised.

[1.4.2] The appellant argued that the OD should ex officio have examined the entire claim for clarity, following the principles of T 1459/05 and T 656/07.

The Board wishes to point out that the OD could hardly take account of T 656/07 which was issued in 2009, i.e. after the OPs in opposition held on 10 November 2008. Remains only one decision T 1459/05, which was decided on 21 February 2008.

Apart from the fact that ODs can hardly be held to have immediate knowledge of any single decision when it issues, the Board cannot find fault with an OD which does not follow a decision which itself explains why its case is so particular that it warrants departing from otherwise consistent case law. It should be kept in mind that the allowability is examined merely on a prima facie basis and all the more so only in connection with a discussion on admissibility of a request.

Procedural expediency, abuse

[1.5] In the first place, due to the direct treatment of the 3rd auxiliary request by the OD, instead of returning to written proceedings, a protracting of the proceedings was avoided and the [patent proprietor] did not benefit from any further delay of the final decision on the part of the OD. Secondly, it is clearly the purpose of OPs before the department of first instance that all concerned are aware of the outstanding issues and which positions are taken on them, including those of the OD. Not allowing simple further amendments to resolve such issues would clearly run counter to this purpose.

In fact, the Guidelines, chapter E-III, 8.7, makes this clear by referring to the fact that it should be ensured (by the OD) that the parties file requests which are to the point and that claims are formulated appropriately. If the OD finds that some patentable subject-matter results from a limitation/amendment, it may even inform the proprietor of the fact and allow him an opportunity to submit amended claims thereon.

In view of the above, the Board can only conclude that the [patent proprietor] needed quite some prompting to finally come up with this request addressing the point under discussion, but not that this amounts to an abuse of proceedings by, nor to/an unwarranted advantage for the [patent proprietor].

Opponent reasonably expected to familiarise itself

[1.6] As argued by the [patent proprietor], the 3rd auxiliary request filed during the OPs was not going in a different direction, but was prepared on the basis of the 3rd auxiliary request filed before the deadline of one month before the OPs. Its claim 1 follows the course of the discussions during the OPs, in that it differs from claim 1 of the earlier 3rd auxiliary request by the expressions “blades, a base opposite to the blades”, “said adapter unit being adapted to be snap fitted ... toward the base” and “fixedly” having been deleted. These had been criticized by the appellant in its letter dated 30 April 2008, section 2.3, which was repeated at the OPs (see point 3 of the minutes). Further, the expressions “at least one of the second adapter engagement member and the handle engagement member being resiliently yieldable” and “such that said snapping may occur” have been added in reply to objections raised in this respect in the OPs. The three latter amendments exactly address the issues the appellant was well aware of before the OPs since it raised objections on them at the OPs.

The OPs were therefore proceeding towards resolution of the outstanding issues.

[1.7] From the minutes of the OPs it transpires that a number of interruptions have taken place, which the Board considers as sufficient for the appellant.

This is confirmed in the first three paragraphs of page 3 of the minutes where it is further stated:

“The chairman interrupted the OPs at 15:05 to allow the patentee to prepare a new and final request.

After reopening of the proceedings by the chairman, the patentee submitted a third auxiliary request (Annex AIII) and explained the amendments done.

The opponent raised no other objections than those already discussed”.

The Board can therefore only conclude that the appellant had sufficient opportunity to familiarize itself with the amended subject-matter.

[1.8] In summary, the Board sees no indication that the OD exercised its discretion to admit the 3rd auxiliary request into the proceedings according to the wrong principles, or without taking into account the right principles or in an unreasonable way.

This request is therefore in the proceedings.

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T 146/07 – Unsigned

The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The parties were summoned to oral proceedings (OPs) to be held on January 20, 2011. After the opponent had announced that he would not attend the OPs and had withdrawn his request for OPs, the Board cancelled the OPs on January 10.

On January 18, the Board received anonymous third party observations (TPO).

Would it take them into account?

[3] Anonymous TPO were received by the board at a very late stage, i.e. after the scheduled OPs had already been cancelled in view of appellant’s announcement not to attend these proceedings and the withdrawal of its subsidiary request for OPs.

According to R 114(1), any observations by a third party shall be filed in writing. This requirement implies that the observations have to be signed (see R 50(3) and R 86) in order to allow an identification of the third party (see Schachenmann in: Singer/Stauder, EPÜ, 5th ed., A 115, marg. n° 13). Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous TPO in order to avoid negative procedural consequences such as apportionment of costs.

[4] When a party to the proceedings submits an unsigned document, the document is deemed not to have been filed if, after a corresponding invitation has been sent out by the EPO, it is not signed in due time (see R 50(3)). Since unsigned anonymous TPO do not allow the EPO to send out such an invitation at all, they necessarily remain unsigned. This has the consequence that they are deemed not to have been filed.

[5] The board is aware that anonymously filed TPO may nevertheless be adopted by a party to the proceedings as its own or may even trigger objections by the competent organ of the EPO of its own motion (see decision T 735/04 [2], dealing with the exceptional situation that a highly relevant patent application of one of the patent proprietors had been submitted by an anonymous third party). However, in the absence of such a further procedural act, anonymous TPO are to be disregarded altogether. This view is in line with the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal refused to take into account an anonymously filed third party statement (see Section VI(3) of the decisions).

[6] Thus, the anonymous observations under A 115 received on 18 January 2011 are deemed not to have been filed and are disregarded by the board.

If the approach set forth in Singer’s commentary is followed, TPO simply cannot be anonymous.

This may be formally correct (although I doubt that the lawmaker had TPO in mind when drafting R 36(3) EPC 1973, which has become R 50(3)), but I do not think that it is in the interest of the EPO (and of the public at large) to require the parties filing observations to reveal who they are. The question of apportionment of costs is too marginal to balance the benefit that can be drawn from allowing anonymous TPO. Yes, there may be cases of abuse of proceedings (this is also possible when straw men act as opponents), but I guess the vast majority of TPO are just that, and many of them would not have been filed if anonymity was not allowed.

As has been found in T 458/07, TPO filed during opposition (appeal) proceedings should be treated as late filed documents, in compliance with the rules the Boards have developed for such documents (considering prima facie relevance, procedural economy, …). In the present case this would have allowed the Board not to take into account the TPO, without even considering whether they were signed or not, which I believe to be irrelevant.

But let us imagine that the present approach prevails. I wonder whether the signature of a professional representative would be considered sufficient if the third party was not identified. After all, one of the parties could have requested the representative to file the observations.

Also, would the use of the EPO third party observation website (here) lead to a R 50(3) notification? The corresponding form allows to identify the third party, but as far as I can see, there is no easy way of signing the form.

Be that as it may, if you are a professional representative and you are asked to file TPO in opposition proceedings, the safest way, obviously, would be to reveal the identity of the party and sign the observations. But what should be done if the third party wants to stay incognito, as it most likely will? I think I would sign the observations as a professional representative and make a clear declaration that the third party is not a party to the proceedings. Perhaps this would dispel any doubts of the EPO about a possible abuse of proceedings.

Any thoughts?

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T 2375/10 – Empty Hands And Heavy Hearts

Sometimes Examining Divisions (ED) are too concise in their decisions refusing an application. This invariably leads to the a remittal, as in the present case.

The relevant part of the decision read:

Too short, says the Board:

[2] According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 111(2) a decision should contain, in logical sequence supporting arguments. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the appellant and, in case of an appeal, also the Board of Appeal to examine whether the decision could be considered to be justified or not (see T 278/00; T 87/08 and T 1366/05).

In the present case the ED decided against the Appellant, that the subject-matter of claim 1 according to the sole then pending request did not involve an inventive step (A 56).

A 56 requires that the assessment of inventive step is made having regard to the state of the art. Accordingly, the logical chain of reasoning of the ED in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art.

The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step is to be found in point 3, comprising two paragraphs.

Paragraph 3.1 merely summarizes the arguments of the Applicant and does not reflect the ED’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body.

Consequently, paragraph 3.2 is the sole portion of the written decision under appeal which may reveal the reasoning of the Opposition Division (sic) on the issue of inventive step and, thus, is the sole portion of the decision which could justify the ED’s conclusion of lack of inventive step. However, there is no reference at all in this paragraph to any prior art, paragraph 3.2 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical effect of pressure reduction in a wellbore fluid was only demonstrated for graphite as the resilient material, but that this effect had not been shown for the other cited materials and therefore the selection of materials recited in claim 1 did not solve the technical problem in its entire breadth.

Therefore, the ED arrived in the appealed decision at the conclusion that the claimed subject-matter lacked inventive step merely by declaring that a purported effect has not been achieved by other cited materials, i.e. the technical problem as defined in the application as filed had not been solved in the entire breadth of the claims, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art.

Since, the requirement of inventive step defined in A 56 is based on the state of the art, the decision of the ED, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 111(2).

[3] This failure amounts to a substantial procedural violation requiring that the decision under appeal is set aside and the case is remitted to the first instance (see T 278/00 [5]). The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of the substantial procedural violation to reimburse the appeal fee pursuant to R 103(1)(a).

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T 866/08 – Of Mice And Dogs

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent on the ground of insufficiency of disclosure.

The OD argued that the therapeutic effect of the claimed vaccine had not been established. The prior art did not contain a disclosure of the use of a polynucleotide vaccine formula for treating dog diseases. In view of document D12, which had been published after the effective date of the patent, there were doubts as to whether the polynucleotide vaccines could replace the existing effective vaccines. Therefore, it was not possible to extrapolate the results obtained with mice .

Claim 1 of the main request before the Board read:

1. A vaccine inducing a protective response for canidae comprising a plasmid containing and expressing the G gene of the rabies virus and a suitable vehicle.

Here is what the Board had to say on sufficiency of disclosure:

*** Translation of the French original ***

[2] According to the established case law, when a claim covers a therapeutic application of a substance or a composition, it is not enough for the requirements of A 83 to be fulfilled that the skilled person can realize or obtain the compounds to be used based on the invention that is disclosed in the patent and/or on his common general knowledge; it is also necessary to establish that the claimed compound does indeed have a direct effect on a metabolic mechanism that is specifically linked to the disease to be treated. This mechanism may be known from the prior art or indicated in the application as such, e.g. via experimental trials. Once this has been proven, it is possible to take into account evidence that has been published at a later stage in order to support these conclusions (see T 609/02 [9]).

[3] In the present case, the patent does not provide any experimental data establishing that a plasmid expressing the G gene can induce a protective response against rabies in canidae.

[4] However, the OD has pointed out, in substance, that at the date under consideration there was no use of polynucleotide vaccines for treating dog diseases in the prior art for vaccinating dogs against rabies. Moreover, in view of document D12, which has been published after the effective date of the patent, there were doubts as to whether polynucleotide vaccines could replace the existing effective vaccines such as the vaccines against rabies. Based on these arguments, the OD was convinced that it was not possible to extrapolate in a systematic way the results of document D1, which had been obtained with a polynucleotide vaccine expressing the G gene in mice, to dogs, and that a vaccine tested on mice absolutely had to be tested on dogs in order to determine its effectiveness.

[5] The Board notes that the present patent under consideration covers a compound, the G protein of the rabies virus, which has been identified in the prior art as having the direct effect of producing an immune response in a great number of animals such as canidae (see e.g. documents D6 […], D13 […] and D18). In view of the common knowledge of the skilled person in the technical field under consideration, there was no doubt on the immunological effect of the claimed compound , i.e. its direct effect on the relevant metabolic mechanism, nor has the OD explicitly formulated such doubts.

[6] As a consequence, the impugned decision has to be understood as questioning the fact that polynucleotide vaccines carrying the G protein of the rabies virus can indeed induce the claimed effect (i.e. that the carrier used can produce the claimed effect in canidae) in view of the disclosure of document D12, which has been published at a later stage, rather than expressing doubts regarding the direct effect of the this gene on the immune system.

[7] First of all, the Board notes that document D12 has been published shortly after the priority date of the present patent and, therefore, was not part of the general knowledge of the skilled person. Moreover, table 1 of this document sums up 29 scientific articles that had been published during the three years preceding its publication and which deal with “DNA vaccines ... to induce some form of immunity against a dozen or more infectious agents” […], thereby establishing the functionality of those structures in a great number of animals. As the OD nevertheless indicated, document D12 expresses doubts as to whether polynucleotide vaccines could replace the existing effective vaccines. However, the Board notes that this does not shed doubt on the technical usefulness of those vaccines but only their superiority with regard to the existing effective vaccines. Therefore, the Board cannot endorse the opinion of the OD according to which document D12 can raise doubts that a polynucleotide vaccine such as the one claimed could lack functionality.

[8] The Board also notes that […] the impugned patent refers to document D1. It contains the statement that “as regards rabies, protection of mice against virulent challenge has been demonstrated after treatment with a polynucleotide vaccine expressing the gene for the G protein under the control of the SV40 virus early promoter [reference to D1], a similar result being achieved by using the CMV IE promoter.” The Board notes that document D1, therefore, also discloses that a vaccination with a plasmid carrying the gene for the G protein of the rabies virus induces a protective response against the rabies virus in mice.

[9] As a consequence, the Board considers that the disclosure of the prior art is such that the vaccine according to claim 1 is likely to be useful for the therapeutic application at which the claim is directed. Under these circumstances, the disclosure in documents D23, D29, D41 and D45 to D49, which have been published at a later stage, may be taken into account for supporting these conclusions. As a matter of fact, examples 20 and 21 of document D45, i.e. the U.S. patent that is equivalent to the impugned patent, contain experimental data which extensively disclose the short and long term protection of dogs that have been vaccinated with the plasmid disclosed in example 16 and administered according to the teaching of example 19 of the impugned patent.

[10] This is why the impugned patent is considered to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, as required by A 83.

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T 1789/09 – Margin Of Error

This decision – dealing with an opposition that had been rejected by the Opposition Division – contains some interesting statements on the scope of a claim the decisive parameter of which was affected by a considerable margin of error.

Claim 1 of the main request before the Board read:

A process for the preparation of a granular detergent composition or component having a bulk density greater than 650 g/l, which comprises the step of dispersing a liquid binder throughout a powder stream in a high speed mixer to form granular agglomerates,

characterised in that the powder stream comprises crystalline zeolite A having an oil absorbing capacity of at least 40ml/100g. (my emphasis)

In what follows, the Board dealt with the interpretation of the claim, sufficiency of disclosure and novelty:

Interpretation and sufficiency of disclosure (all requests)

[1.1] The objections made by the [opponent] with respect to sufficiency of disclosure are based on the [patent proprietor’s] interpretation of the parameter “oil absorbing capacity” used in Claim 1 of all requests.

[1.1.1] According to the [opponent] this term referred to the initial oil absorbing capacity of the zeolite before any process step was carried out. Otherwise, there would be a lack of sufficiency of disclosure since Claim 1 covered the possibility of forming powdery agglomerates of the zeolite with other components before the powder stream is introduced into the high speed mixer. The other components might change the oil absorbing capacity of the zeolite. However, it was impossible for any skilled person to measure the oil absorbing capacity of the zeolite within such agglomerates.

[1.1.2] In the [patent proprietor’s] opinion this interpretation was against the gist of the invention as set out in the patent. It was apparent from the description that the invention did not cover embodiments where the oil absorbing capacity of the zeolite would be lost by combining the zeolite with other components prior to introducing the zeolite containing material into the powder stream.

The [patent proprietor] pointed to the first sentence of paragraph 17 of the patent in suit where the following is stated:

“It is an essential feature of the present invention that the Zeolite A used in the formation of the granular agglomerates has an oil absorption capacity of at least 40ml/100g”,

and argued that following the second sentence of A 69(1), according to which the description had to be used for interpretation, Claim 1 had to be construed such that the zeolite had the oil absorbing capacity of at least 40 ml/100g at the moment where the liquid binder is dispersed within the high speed mixer throughout the powder stream.

[1.1.3] A 69(1) relates to the extent of protection conferred by a European patent or patent application. According to the Protocol on the Interpretation of A 69 which was adopted as an integral part of the EPC to provide a mechanism for harmonisation of the various national approaches to the interpretation and determination of the protection conferred by a patent, this should be done so as not to overestimate either the literal wording of the claims or the general inventive concept disclosed in the description (see also G 2/88 [2.1, 3.3 and 4]).

The Board notes, however, that this does not mean that the scope of protection conferred by a claim is generally limited by the description.

However, the sentence cited from paragraph 17 of the patent does not even say that the zeolite exhibits the oil absorbing capacity only during the formation of the granular agglomerates in the high speed mixer. In the Board’s opinion, the term “in the formation of” certainly covers the process of forming granular agglomerates as such, as it is expressed in Claim 1.

Moreover, since the process of Claim 1 merely “comprises” the step of dispersing a liquid binder throughout the zeolite containing powder stream in the high speed mixer, further process steps like formation of the powder stream by agglomeration with other ingredients are not excluded.

The [patent proprietor] has agreed that it would not be possible for a skilled person to measure the oil absorbing capacity of the zeolite within such agglomerates.

Hence, in the Board’s opinion, defining a process by a parameter which clearly cannot be measured does not make technical sense to the skilled artisan.

[1.1.4] The Board concludes therefore, that anyone skilled in the art would understand the oil absorbing capacity mentioned in the claims as that of the zeolite as initially applied, i.e. before any process step is carried out in the course of which the initial capacity is changed. No other meaning can be attributed to the term in question.

As a corollary to this conclusion, consideration of the [opponent’s] objection under A 83 is redundant.

[1.2] Another disagreement concerns the parties’ interpretation of the value of the oil absorbing capacity.

According to the patent in suit […], the oil absorption values can be determined by following British Standard Part 7: 1982 which corresponds to ISO 787/5-1980, i.e. document D1.

[1.2.1] The [opponent] argued that this standard included an inaccuracy of measurement of ± 50%.

[1.2.2] According to the [patent proprietor], however, the error was much smaller since document D1 only mentioned a difference of at most 50% between the absolute measured values. Further, this error did not even apply to zeolites since document D1 concerned pigments and extenders.

[1.2.3] In the Board’s opinion there is no reason to assume that the error is smaller with zeolites, since the patent recommends the standard of document D1 for determining the oil absorbing capacity and does not mention a particular accuracy especially if zeolites are used.

Concerning the extent of the error, it appears that the [patent proprietor’s] understanding is the correct one (see document D1, page 1, second paragraph). However, even in this case, the error is still as high as ± 33.33% (± 1/3).

Due to this uncertainty of measurement, the Board considers the values mentioned in the claims not as selective points but as ranges of possible values. Accordingly, the value of the oil absorbing capacity mentioned in Claim 1 of the main request covers the range of 40 ml/100g ± 33.33%, hence values from about 26.7 to 53.3 ml/100g.

Novelty (main request and first auxiliary request)

[2.1] Lack of novelty of the claimed subject-matter has been objected to, inter alia, in view of Example H of document D2.

[2.2] This example discloses a process wherein the spray-dried powder of Example G is granulated with liquid nonionic surfactant as binder in a Fukae high speed mixer to form a granular detergent agglomerate having a bulk density greater than 650 g/l (pages 8 to 10).

The powder stream of Example G comprises zeolite A, specifically Wessalith P ex Degussa […]. The oil absorbing capacity of Wessalith P as measured according to document D1 is given as 36 g/100g […] which translates into 39 ml/100g […] and with the inaccuracy of measurement of document D1 into the range of 26 to 52 ml/100g.

[2.3] The [patent proprietor] argued that the inaccuracy of measurement in document D2 was not comparable with that of the patent in suit since it was based on a sample of 100g instead of 5g as in document D1 and the patent.

[2.4] However, the Board adopts in this respect the [opponent’s] view that the accuracy of measurement rather increases with increasing sample size.

[2.5] Thus, there exists a large overlap between the oil absorbing capacity of 26.8 to 53.2 ml/100g of the zeolite A used in the process of Claim 1 of the main request and that of the Wessalith P of 26.13 to 51.87 ml/100g used in Example H of document D2.

Since there is no hint in document D2 not to work within the overlapping area, hence with zeolite A having an oil absorbing capacity of 26.8 to 51.87 ml/100g, the Board concludes that document D2 anticipates the process of Claim 1 of the main request.

[2.6] The same reasons apply mutatis mutandis to Claim 1 of the first auxilary request which differs from that of the main request only in that the oil absorbing capacity of zeolite A is now at least 45 ml/100g. As this value covers the range from 30 to 60 ml/100g, it still overlaps to a large extent with that of the Wessalith P used in document D2 […].

[2.9] For all these reasons, the Board concludes that the subject-matter of Claim 1 of the main request and the first auxiliary request is not novel in view of Example H of D2 (A 54).

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