T 411/10 – Octopus Defence Rejected

Invoking a lack of clarity of one’s own application is always a risky endeavour. In the present case the patent proprietor, whose patent had been revoked by the Opposition Division (OD), thought that the A 123(2) objection could be overcome by pointing out that a feature that had been omitted was devoid of meaning.

The claims under consideration, which are directed at a process for producing an aldehyde, are quite lengthy, so I will not reproduce them. What is decisive is that the OD found that the step of the process according to claim 1 as granted, where the aldehyde was separated from the reaction solution by distillation at a temperature of at most 150ºC under a pressure of 1 to 755 mmHg, was not disclosed in the application as filed, and that, therefore, A 123(2) was violated.

When justifying those features, the patent proprietor referred exclusively to paragraph 44 of the application as filed (which is found on page 44 of the application as filed, lines 17 to 23):

According to the patent proprietor, the expression “when the boiling point of an aldehyde product is high” had no precise meaning, since there was no distinction between high boiling point and low boiling point aldehydes. Following the established case law of the Boards of Appeal of the EPO ac cording to which unclear terms had to be construed broadly the relative term “high” could not be a distinguishing feature, without a basis for comparison. Hence, the passage in paragraph could not be construed in a way to exclude low boiling point aldehydes.

The Board could not endorse this reasoning.

[2.1] The patent in suit has been opposed inter alia on the ground that the subject-matter of the patent extended beyond the content of the application as filed (A 100(c)). Inter alia, the feature in granted claim 1 relating to the separation of the aldehyde from the reaction solution “by distillation at a temperature of at most 150ºC under a pressure of 1.33 x 10**(2) to 1.004 x 10**(5) Pa (1 to 755 mmHg)” was objected to for having no basis in the application as filed.

[2.2] In order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed it has to be examined whether that claim comprises technical information which a skilled person would not have directly and unambiguously derived from the application as filed.

[2.3] With respect to support in the application as filed of the step of the distillation of the aldehyde under the required pressure range of from 1 to 755 mmHg, the [patent proprietor] referred exclusively to page 44, lines 17 to 23.

This section of the application as filed, however, discloses that when the boiling point of an aldehyde product is high, it is preferable to employ vacuum distillation under a reduced pressure in the range of from 755 mmHg to 1 mmHg. It concerns therefore only the distillation of particular aldehydes, namely those with a high boiling point, and not the distillation of any aldehydes independently of their boiling point.

The disclosure in the application as filed of a feature concerning the distillation of particular aldehydes does not form a proper basis to the claimed feature relating to the distillation of any aldehydes regardless of their boiling point, since a generalisation must be made to arrive at the process of claim 1 covering a process for producing any aldehyde by reacting an olefinic compound with carbon monoxide. To generalise a feature relating to the distillation of specific aldehydes to the distillation of any aldehyde provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed. The amended claim 1, thus, is not based on the disclosure of the original application and extends beyond the content thereof.

Hence, the Board concludes that the subject matter of claim 1 as amended contravenes the provisions of A 123(2).

[2.4] The [patent proprietor] argued that the requirement “when the boiling point is high” defining the aldehyde to be distilled under reduced pressure in the application as filed was so unclear that it could merely be ignored.

However, although the expression “when the boiling point of an aldehyde is high” is vague, it makes clear that the feature relating to vacuum distillation under the reduced pressure in the range of 755 to 1 mmHg incorporated into claim 1 is not disclosed for any aldehydes encompassed by amended claim 1, but is restricted to high boiling point aldehydes. Hence, omitting this restriction in the definition of the aldehyde to be distilled under reduced pressure provides the skilled with new subject-matter. This argument of the [patent proprietor] must be rejected.

The [patent proprietor] further argued that the preceding lines of page 44 taught that the temperature must be kept as low as possible implying therefore that the vacuum distillation under reduced pressure should be used for any aldehyde, and that anyway the skilled man for practical and economical reasons would always carry out the distillation of the aldehydes under reduced pressure.

However, this argument is not supported by the fact since it is clear from the disclosure in passage of page 44, lines 20 to 23 of the application as filed that the distillation under reduced pressure of high boiling point aldehydes is preferred, i.e. optional, and thus not compulsory. Furthermore the finding of whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed is not a matter of how the skilled man would carry out a teaching, but rather the matter which technical information a skilled person would directly and unambiguously derive from the content of the application as filed. In the present case, the distillation under reduced pressure in the range of from 1 to 755 mmHg is disclosed exclusively for high boiling aldehydes, so that the pressure range now required by claim 1 for the distillation of any aldehyde provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed.

Thus, the application as filed does not provide a proper basis for amended claim 1.

[2.5] For these reasons, the Board concludes that granted claim 1 extends the subject-matter claimed beyond the content of the application as filed thus justifying the ground for opposition pursuant to A 100(c).

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