In the present case the patent proprietor and the opponent filed appeals against the decision of the Opposition Division (OD) to maintain the patent in amended form.
The decision contains two interesting paragraphs related to compliance with A 123(2).
Main request
[3.1] The word “comprising” used to characterize the milling mixture in claim 1 has been replaced by the expression “… consisting essentially of …”. Such an amendment is to be examined in the light of the requirements of A 123(2).
[3.2] This expression is not mentioned explicitly in the application as originally filed. Thus the board has to examine on the basis of the submissions of [the patent proprietor] whether it is directly and unambiguously derivable from the content of the application as originally filed.
[3.3] The decisions of the Boards of Appeals cited by [the patent proprietor], namely T 759/91; T 522/91 and T 457/02 do not relate to A 123(2) and are not relevant in that respect.
T 759/91 [2.2], T 522/91 [2.2]: “Considering that the term “comprising substantially” in Claim 1 lacks clear explicit boundaries, its scope needs interpretation, there being no legal basis for objection to this lack of clarity under A 84 at the present stage of the proceedings. While in common language the word “comprise” may have both the meanings “include” or “comprehend” and “consist of” (“The Concise Oxford Dictionary of Current English”, 8th Ed. by R.E.Allen, Clarendon Press, Oxford, 1990), in drafting patent claims legal certainty requires its interpretation to be normally restricted to the broader meaning “include” or “comprehend”. The word “substantially”, imposes a restriction on the word “comprising”, in the sense that “to a large extent only that is comprised which is specified”. The boundaries of the term “comprising substantially” are therefore to be drawn where the essential characteristics of the specified subject-matter cease. The scope of the term “comprising substantially” is therefore interpreted as being identical to that of “consisting essentially of” (see T 472/88 [3]). However, due to the unequivocal character of the words “consisting of” as compared to “comprising” the expression “consisting essentially of” is to be given preference.”
T 457/02 [4.2-3] : “The OD considered that D8 was novelty- destroying for the subject-matter of Claim 1 because the use of the term “comprising” did not exclude the possibility of additional steps between steps (a) and (b) of the claim. The Board agrees with the interpretation of the term “comprising” by the OD. As correctly stated in the Guidelines for Examination in the EPO, Part C, Chapter III, 4.13, in patent claims the term “comprising” is interpreted as “including”, “containing” or “comprehending” and consequently does not exclude the presence of additional steps.”
The “Headnote” of the decision of the Enlarged Board of Appeal G 1/93 relates to a specific fact situation which is not analogous with that of the present case.
NB: The patent proprietor had referred to the second paragraph of the headnote (“A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.”) since the expression “consisting essentially of” was meant to exclude non technical features.
[3.3.1] It is, therefore, concluded that in the absence of either an explicit or an implicit disclosure of a process involving a milling mixture “consisting essentially of”, the process defined in Claim 1 of the main request extends beyond the content of the application as originally filed.
[3.4] Hence, claim 1 of the main request contravenes the requirements of A 123(2).
Auxiliary requests 1 to 3
[4.1] Claim 1 of the auxiliary requests 1 to 3 comprise the feature: “the milling additive is selected from inorganic compounds, surfactants, dispersants other than the aromatic polyalkylene oxide dispersants specified above, wetting agents, defoamers, grinding aids, latices, or mixtures thereof, … or one or more inorganic and/or organic bases.”
[4.2] This feature was not present in the claims as granted and it must be verified whether or not the amendment complies with the requirements of A 123(2) in accordance with A 101(3)(a).
[4.3] The passage of the description illustrating the milling additives which could be added to the milling mixture reads as follows:
“Milling additives may also be added in conventional quantities (e.g., 0.1 % to 50% by weight relative to the pigment) to a milling mixture. Examples of suitable milling additives include inorganic compounds (such as metal salts), surfactants, dispersants other than the aromatic polyalkylene oxide dispersants specified above (such as sulfonamide, carboxamide, or aminoalkyl derivatives of organic pigments, particularly of perylenes, phthalocyanines, or quinacridones), wetting agents, defoamers, grinding aids, latices, or mixtures thereof. In certain cases, one or more inorganic and/or organic bases may be added, especially if the aromatic polyalkylene oxide dispersant contains acidic functional groups”. […]
[4.4] The description as originally filed states that
“In certain cases, one or more inorganic and/or organic bases may be added”.
This means that the elements following it, may be added to the elements preceding it. That “one or more inorganic and/or organic bases” are present alone as milling additive is not disclosed. The word “or” involves an alternative related to “one or more inorganic and/or organic bases” as a milling additive. This alternative, that the milling additive can only be one or more inorganic and/or organic bases extends beyond the content of the application as originally filed as already found by the OD […].
[4.5] Consequently, claim 1 of the first to third auxiliary requests contravenes the requirements of A 123(2).
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