T 195/09 – Dangers Of Mono & Poly

The present decision deals with appeals of all parties against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 as granted read:

1. A method for washing soiled dishes through a series of sequential cycles comprising a penultimate rinse cycle and a final rinse cycle, the method comprising charging a mechanical dishwashing composition comprising:

(A) an anti-scaling polymer formed from

• 50-99% by weight of the polymer of an olefinically unsaturated carboxylic monomer;
• 1 to 50% of at least one monomer unit selected from the group consisting of copolymerizable sulfonate polymers, copolymerizable nonionic monomers and mixtures thereof;

(B) 0.1 to 99.9% of a vehicle releasing the anti- scaling polymer into the penultimate and final rinse cycle of a dishwashing sequence, characterised in that the dosage of the anti-scaling polymer is such that the weight ratio of the level of dosed antiscalant in the penultimate rinse cycle to that in the final rinse cycle is from about 1:10 to about 10:1.

The OD found that the original documents of the application did not contain any support for the use of an anti-scaling polymer formed from copolymerizable sulfonated polymers. It therefore found claim 1 as granted not to comply with A 123(2). As a matter of fact, the application as filed referred to copolymerizable sulfonated monomers; the reference to polymers had been introduced via a claim amendment filed in response to a communication under A 96(2). (Does this ring a bell? Trap ahead!)

As regards claim 1 according to then pending first and second auxiliary requests - wherein the wording “copolymerizable sulfonated polymers” contained in claim 1 as granted had been amended into “copolymerizable sulfonated monomers” - the OD found that this amendment could not be considered to be an obvious correction of an error since it was not immediately evident that the reference to copolymerizable sulfonated polymers was erroneous. However, by considering that claim 7 as granted and the overall description of the patent in suit related extensively to anti-scaling polymers formed from copolymerizable sulfonated monomers, the protection of the granted patent had to be understood as including both types of anti-scaling polymers formed from copolymerizable sulfonated polymers or copolymerizable sulfonated monomers; therefore, claim 1 according to the first and second auxiliary requests did not contravene the requirements of A 123(3).

Main request (patent as granted)

A 123(2)

[1.1.1] Claim 1 as granted relates to a method for automatic dishwashing wherein the used machine dishwashing composition contains the anti-scaling polymer (A) and 0.1 to 99.9% by weight of a vehicle (B) capable of releasing such an anti-scaling polymer during the last two rinse cycles.

Moreover, the anti-scaling polymer (A) is formed from (i.e. consists of) 50 to 99.9% by weight of olefinically unsaturated carboxylic monomers and 0.1 to 50% by weight of copolymerizable sulfonated polymers, nonionic monomers or mixtures thereof.

It is undisputed that the original documents of the application do not disclose copolymerizable sulfonate polymers as possible monomers of the anti-scaling polymer (A).

[1.1.2] As found in the decision under appeal, it was common general knowledge that so-called macromonomers or macromers, i.e. oligomers or polymers with a polymerizable end group, can be used as monomers in the preparation of copolymers […].

Therefore, the skilled person, in reading claim 1, would not have considered the wording of this claim, requiring inter alia the use of sulfonate polymers as comonomers of the anti-scaling polymer (A), to be manifestly incorrect and would have interpreted the claim as it stands, i.e. as relating also to the use of anti-scaling polymers (A) formed by copolymerizing sulfonated polymers with olefinically unsaturated carboxylic acids.

Since these polymers are not disclosed in the documents of the application as originally filed, the Board concludes that claim 1 as granted does not comply with the requirements of A 123(2).

This was not contested by the patent proprietor.

Auxiliary request (patent as maintained by the OD)

A 123(3)

[2.1.1] Claim 1 of the set of claims according to the auxiliary request differs from claim 1 as granted inter alia insofar as the wording “copolymerizable sulfonated polymers” contained in claim 1 as granted has been amended into “copolymerizable sulfonated monomers”.

Therefore, this claim extends to methods in which the used composition comprises as anti-scaling polymers (A) those formed from olefinically unsaturated carboxylic monomers and copolymerizable sulfonated monomers, which polymers were not encompassed by the definition of the anti-scaling polymers (A) of granted claim 1.

Moreover, the remaining claims are all dependent on claim 1. Therefore, claim 1 represents the broadest scope of the patent in suit according to the auxiliary request.

[2.1.2] According to A 69(1), the extent of protection conferred by a European patent shall be determined by the claims, which shall be interpreted by using the description and the drawings, if available.

In the patent proprietor’s view, by considering that the description of the patent in suit does not mention copolymerizable sulfonated polymers and relates instead extensively to copolymerizable sulfonated monomers, claim 1 as granted would have been interpreted by the skilled person to relate not only to the use of anti-scaling polymers (A) formed from copolymerizable sulfonated polymers but also to the use of anti-scaling polymers (A) formed from copolymerizable sulfonated monomers. This interpretation would be supported by the wording of granted claim 7 relating to specific sulfonated monomers.

However, in the Board’s view, the fact that the description relates extensively to copolymerizable sulfonated monomers and not to copolymerizable sulfonated polymers amounts only to a discrepancy between granted claim 1 and the description but, in the absence of any specific indication in the description, it cannot be considered to be a teaching that the wording “copolymerizable sulfonated polymers” in claim 1 should be interpreted as having a broader meaning than what would be understood by the skilled person.

Moreover, even though the granted claim 7, which is dependent on claim 1, lists specific sulfonated monomers, the skilled person would interpret this dependent claim only as relating to the anti-scaling polymers (A) of claim 1 containing additionally such specific sulfonated monomers.

Therefore, as explained in point [1.1.2] above, claim 1 as granted would have been understood by the skilled person as it stands, i.e. as relating also to the use of anti-scaling polymers (A) which are formed from olefinically unsaturated carboxylic monomers and copolymerizable sulfonated polymers, which anti-scaling polymers (A) do not include polymers formed solely from olefinically unsaturated carboxylic monomers and generic sulfonated monomers as encompassed by claim 1 according to the auxiliary request.

[2.1.3] The patent proprietor submitted also that, by considering the description, the skilled person would have understood that the granted claim 1 referred erroneously to copolymerizable sulfonated polymers instead of copolymerizable sulfonated monomers and that the amended claim 1 according to the auxiliary request, by reporting the truly intended technical features of the invention, would not extend the scope of the granted patent.

However, as explained in points [1.1.2] and [2.1.2] above, claim 1 as granted would have been understood by the skilled person as it stands. Therefore, also this argument of the patent proprietor cannot justify the allowability under A 123(3) of the auxiliary request.

[2.1.4] The Board remarks also that the decisions G 3/89 and G 11/91, cited by the patent proprietor during oral proceedings, regard only the allowability of a request for correction of an error and the relationship between R 88 EPC 1973 and A 123(2). Therefore, these decisions cannot apply to the present case wherein it has to be decided on the allowability of the amended patent under A 123(3).

[2.1.5] The patent proprietor referred also to the decision T 108/91, in which it was decided that an inaccurate technical statement in a granted claim, which statement is evidently inconsistent with the totality of the disclosure of the patent and would contravene the requirements of A 123(2), can be replaced with an accurate statement of the technical features involved without infringing A 123(3) (see headnote and points [2.2] and [2.3]).

However, the Board remarks that this decision is older than the decision G 1/93 of the Enlarged Board of Appeal of the EPO, which ruled on a similar point of law.

In particular, it was decided in G 1/93 (headnote 1 and point [13]), that if a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of A 123(2) and which also limits the scope of protection conferred by the patent (for example, an inaccurate technical statement inconsistent with the totality of the disclosure of the patent), such a patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under A 100(c) prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by A 123(3). Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating A 123(3), i.e. for replacing the unallowable technical feature limiting the scope of protection conferred by the patent as granted with another technical feature which restricts the scope of the granted patent.

Therefore, according to G 1/93, it is not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim. In this respect decision T 108/91 has been clearly overruled by G 1/93.

Moreover, the conclusions of the decision G 1/93 are also applicable to the present case wherein the technical feature “anti-scaling polymer (A) formed from copolymerizable sulfonated polymers” limiting the scope of the granted patent and being unallowable under A 123(2), was replaced by the technical feature “anti-scaling polymer (A) formed from copolymerizable sulfonated monomers” which does not restrict the scope of the granted patent but extends its scope to subject-matter not encompassed by the granted claims.

[2.1.6] Therefore, the Board concludes that the patent according to the auxiliary request contravenes the requirements of A 123(3). […]

The patent is revoked.

Unfortunately, in Epoland some traps are inescapable. Perhaps a future revision of the EPC might find inspiration in a special remedy available to Monopoly players:

Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.

NB: The blog du droit européen des brevets has also published a post on this topic, here.