T 1162/07 – Carrying One’s Burden

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty over document D3.

Claim 1 of the main request before the Board read:

Use of metal complexes of an azo compound which conforms to the formula (I) or to one of its tautomeric structures

where

R and R’ are independently OH, NH2, NH-CN, acylamino or arylamino and

R1 and R1’ are independently -OH or -NH2,

and which hosts at least one guest compound, the metal complexes corresponding to the mono-, di-, tri- and tetra-anions of the azo compounds of the formula (1) with the metals Li, Cs, Mg, Cd, Co, Al, Cr, Sn, Pb, particularly preferably Na, K, Ca, Sr, Ba, Zn, Fe, Ni, Cu, Mn and La, as a pigment in colour filters for liquid-crystal displays.

The Board examines the novelty of this claim with respect to D3:

*** Translated from the German ***

[3.1] Document D3 is a Japanese patent application filed on November 11, 1997 and claiming a priority of April 28, 1997. It was published on January 22, 1999. it discloses the use of “BABYPLAST Yellow 5GN 01” as “C.I. Pigment Yellow 150” for the manufacture of LCD colour filters […].

[3.2] The annexes to document D8 provide evidence for the following facts: A fax from Bayer AG to Bayer Ltd. in Tokyo, sent on March 15, 1999, refers to the delivery of 600 kg of “BABYPLAST Yellow 5GN1 01” of batch FA 320 016. According to the English translation of the fax of the “East Japan Division of Yamamoto Trading Co. Ltd.”, sent on July 22, 1999, 100 grams of this batch (FA 320 016) were shipped by Bayer (Osaka) to the [opponent].

According to document D9, “BABYPLAST Yellow 5GN1 01” of batch FA 320 016 was analysed and the pigment fraction was identified as a melamine coordination compound of azobarituric acid 1:1 Nickel complex […].

[3.3] In opposition appeal proceedings, the parties to the proceedings carry the separate burdens of proof of any fact they allege (see T 270/90 [2.1]). If one party has submitted convincing evidence for facts it alleges then it has discharged its burden of proof. The evidence provided does not necessarily have to prove these facts with absolute certainty in order to be convincing; evidence showing high probability is sufficient. If a party has discharged its burden of proof, then the adverse party, which tries to invalidate the facts that have been established convincingly by submitting adverse arguments bears the burden of proof for those arguments (see T 109/91 [2.10], T 239/92 [2.4.2-3], T 525/90 [4]).

[3.4] The facts described above in paragraphs [3.1] and [3.2] were not contested by the parties, and the Board having thoroughly examined them, does not contest them either.

However, it was disputed

• on one hand, whether, when novelty is examined, the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 or the pigment on sale on its date of publication (for which D9 provided a chemical analysis) was to be taken into account;
• on the other hand, whether, as submitted by the [patent proprietor] the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 was not a melamine coordination compound of azobarituric acid 1:1 Nickel complex.

[3.4.1] As far as the second disputed question is concerned, it has to be determined who carries the burden of proof for the alleged fact. In order to do so, it first has to be ascertained whether the [opponent] has discharged its burden of proof concerning the lack of novelty of the claimed subject-matter in view of document D3. As the facts mentioned under [3.1] and [3.2] have not been contested, the evidence provided by the [opponent] can only be considered to be insufficient if the fact asserted by the [patent proprietor] is probable.

[3.4.2] The [patent proprietor] suggested that the “BABYPLAST Yellow 5GN 01” product used in document D3 did not contain any melamine. It based this argumentation

• on one hand, on the supposition that the composition of products sold under a trade name, such as PERSIL®, often changes, and
• on the other hand, on documents D24 and D26 to D28 showing that the recipe of “BABYPLAST Yellow 5GN 01” had indeed been modified by the addition of melamine.

The trade name PERSIL is used for selling detergents, i.e. products that are destined to end users. “BABYPLAST Yellow 5GN 01”, however, is a pigment preparation, i.e. a product that is delivered to processing companies which use this product for manufacturing coloured intermediate or end products. During the processing steps, the pigment can come in contact with a great variety of components and devices and has to be compatible with them under the chosen processing conditions. Therefore, a change of the recipe of such a pigment preparation can have effects not only regarding the end product - as is the case for PERSIL® - but may also lead to perturbations of the processing. As a consequence, the manufacturer of “BABYPLAST Yellow 5GN 01” has committed itself to comprehensively inform and consult its customers in writing before any change of the specification of the product at constant quality […]

(See the English translation of the annex to document D10:

(highlighting added)

Therefore, each modification of the recipe of “BABYPLAST Yellow 5GN 01” implied great effort. As a consequence, it has to be assumed that such modifications cannot have been commonplace (die Regel). Thus the Board cannot follow the argument of the [patent proprietor] according to which the composition of trade names such as “BABYPLAST Yellow 5GN 01” was subject to frequent change. Therefore, the Board comes to the conclusion that the [opponent] has discharged its burden of proof to provide evidence for the lack of novelty of the subject-matter of the claims in view of document D3.

[3.4.3] Consequently, the [patent proprietor] carries the burden of proof for its assertion that the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 was not a melamine coordination compound of azobarituric acid 1:1 Nickel complex.

As far as apportionment of the burden of proof is concerned, it is not relevant whether the [patent proprietor] had easier access to the corresponding evidence than the [opponent]. Therefore, the argument of the [patent proprietor] according to which it was independent from the then manufacturer of “BABYPLAST Yellow 5GN 01” and was not able to provide further evidence, is not relevant.

[3.4.4] As a consequence, it has to be examined whether, as pointed out by the [patent proprietor], the recipe of “BABYPLAST Yellow 5GN 01” had indeed been modified by the addition of melamine between the priority date of document D3 and the priority date of the opposed patent. The [patent proprietor] relied on documents D24 and D26 to D28.

Documents D24 and D26 disclose “C.I. Pigment Yellow 150” to be a nickel complex of the formula

[…] Document D27 discloses in its example 2 the production of such a complex. However, these disclosures do not exclude that the commercial product “BABYPLAST Yellow 5GN 01” also contained additional embedded melamine.

Document D28 informs on a modification of the manufacturing process of “BABYPLAST® Gelb 5GN 01” which made the product “clearly more green, brilliant and transparent”. However, this document does not disclose whether this process modification involved a change of the starting materials, let alone whether it concerned the addition of melamine to the reaction mixture.

Therefore, the arguments and the evidence provided by the [patent proprietor] cannot substantiated that the “BABYPLAST® Gelb 5GN 01” product available on the priority date of document D3 did not contain melamine as clathrate (Einschlussverbindung).

Consequently, one has to assume that the pigment “BABYPLAST Yellow 5GN 01” that was on sale on the priority date of document D3 also was a melamine coordination compound of azobarituric acid 1:1 Nickel complex.

Therefore, the disputed question mentioned first under [3.4] above is not relevant for the present decision. However, the Board wishes to add that according to the established case law of the Boards of appeal as far as the extent of disclosure of a document that is part of the state of the art within the meaning of A 54(2) is concerned, it is the date of publication that is decisive (T 205/91 [4, last paragraph]).

[3.5] As a consequence, the subject-matter of claim 1 of the main request is not novel. The Board can only consider requests as a whole and, therefore, has to reject the main request.

To read the whole decision (in German), click here.

The file wrapper can be found here.