In this case all the parties filed appeals against the decision of the Opposition Division to maintain the opposed patent in amended form.
Claims 1 and 2 as granted read:
1. Process for manufacturing an oxirane by reaction between an olefin and hydrogen peroxide in a reactor containing a liquid phase, in the presence of water, one or more organic solvents, a catalyst and one or more compounds for increasing the selectivity of the catalyst toward epoxidation reactions, characterized in that:- if the process is performed in batchwise mode, the liquid phase present in the reactor when the reaction starts- if the process is performed continuously, all of the liquid phases that are fed continuously into the reactorhas/have a total organic solvent content of at least 0.1 g/kg and of not more than 675 g/kg, and a total content of water plus hydrogen peroxide of at least 100 g/kg.
2. Process according to Claim 1, characterized in that the total organic solvent content in the liquid phase or all of the liquid phases is not more than 600 g/kg.
and page 4, lines 9 to 13 of the original description read:
The request before the Board contained two independent claims 1 and 11 which read (changes with respect 1 as granted are underlined)
1. Process for manufacturing 1,2-epoxy-3-chloropropane by reaction between allyl chloride and hydrogen peroxide in a reactor containing a liquid phase, in the presence of water, one or more organic solvents, a catalyst and one or more compounds for increasing the selectivity of the catalyst toward epoxidation reactions, characterized in that:- if the process is performed in batchwise mode, the liquid phase present in the reactor when the reaction starts- if the process is performed continuously, all of the liquid phases that are fed continuously into the reactorhas/have a total organic solvent content of at least 0.1 g/kg and of not more than 675 g/kg, and a total content of water plus hydrogen peroxide of at least 100 g/kg.
11. Process for manufacturing 1,2-epoxypropane by reaction between propylene and hydrogen peroxide in a reactor containing a liquid phase, in the presence of water, one or more organic solvents, a catalyst and one or more compounds for increasing the selectivity of the catalyst toward epoxidation reactions, characterized in that:- if the process is performed in batchwise mode, the liquid phase present in the reactor when the reaction starts- if the process is performed continuously, all of the liquid phases that are fed continuously into the reactorhas/have a total organic solvent content of at least 0.1 g/kg and of not more than 600 g/kg, and a total content of water plus hydrogen peroxide of at least 100 g/kg.
The Board dealt with the question of whether this amendment complied with the requirements of A 123(2).
[2.1] In the main request the single independent claim 1 of the patent as granted, referring to a process for the manufacturing of an oxirane (epoxide), has been split into two independent claims, limited to the manufacture of two specific epoxides, in order to avoid an objection of lack of novelty raised by [the opponents].
Independent claim 1 is directed to the manufacture of 1,2-epoxy-3-chloropropane from allyl chloride; the total organic solvent content compared to claim 1 as granted remained unchanged, namely at least 0.1 g/kg and not more than 675 g/kg. Independent claim 11 is directed to the manufacture of 1,2-epoxypropane from propylene; the total organic solvent content has changed to 0.1 g/kg and not more than 600 g/kg.
[2.2] According to [opponent 1] these amendments extended the subject-matter of the patent in suit beyond the content of the application as originally filed, as they impart to the person skilled in the art a new technical teaching, namely to select the upper limit of the content of organic solvent in relation to the olefin to be used. Such a differentiation between olefins was not clearly and unambiguously derivable from the application as filed, where all olefins were considered equivalent.
In support for its arguments [opponent 1] referred to […] the application as originally filed, where the upper limit of the organic solvent was disclosed only in combination with the generic term “olefins”. A general definition of the olefins and the corresponding epoxides could be found on page 4, lines 1-13 of the application as filed. Allyl chloride and propylene were mentioned in lines 12-13 of that page, but no distinction was made between these olefins.
[Opponent 1] also argued that in order to determine whether or not an amendment offended against A 123(2) it was not sufficient to establish whether each amended claim per se was supported by the application as filed, but whether as a consequence of the amendments technical information was introduced which a skilled person would not have objectively and unambiguously derived from the application as filed. Even amendments which did not concern the claims could result in subject-matter extending beyond the application as filed.
In support of this argument, [opponent 1] referred to the decision T 1239/03 [3.3.2]. In this context the [opponent] also pointed out that the description, which had been amended during the opposition procedure, showed quite clearly the new technical information introduced into the patent in suit, namely to select different contents of organic solvents for different olefins.
[2.3] The Board is not convinced by the arguments of [opponent 1].
[2.3.1] Claim 1 of the application as originally filed refers to the epoxidation reaction of an olefin whereby depending on the reaction mode either the liquid phase present in the reactor when the reaction starts or all the liquid phases that are fed continuously into the reactor has/have a total organic solvent content of at least 0.1 g/kg and not more to 675 g/kg.
Dependent claim 2 as originally filed is directed to a preferred embodiment with an upper limit of the total organic solvent content of 600 g/kg.
It is furthermore clearly apparent from the application as originally filed that the use of allyl chloride, resulting in the formation of 1,2-epoxy-3-chloropropane, and the use of propylene, leading to the formation of 1,2-epoxypropane, are particularly preferred embodiments. This is already clear from the very first paragraph of the description as originally filed, as well as from page 4, lines 11-13. Further indications, although in a more specific context, can be found in the paragraph bridging pages 5 and 6 or in claim 7 as originally filed.
Thus, the use of these preferred olefins in a process according to any of the claims of the application as filed, for example claims 1 or 2 or claim 3, which refers back to claims 1 and 2 and discloses the total water and hydrogen peroxide content, is clearly and unambiguously derivable for the skilled reader (selection from one list).
In other words, the manufacturing process for either 1,2-epoxy-3-chloropropane or 1,2-epoxypropane with a total content of organic solvent of at least 0.1 g/kg to not more than 675 g/kg and a total content of water plus hydrogen peroxide of at least 100 g/kg (claims 1 and 3 as originally filed) or, more preferably, with a content of 0.1 g/kg to not more than 600 g/kg (claims 2 and 3 as originally filed) is clearly disclosed.
The main request has been amended by deleting just one of these clearly and unambiguously derivable possibilities, namely the manufacturing of 1,2-epoxypropane with a content of organic solvent of 0.1 to 675 g/kg. Independent claims 1 and 11 refer to the remaining three possibilities, which are also clearly derivable from the application as filed. This deletion of one of the possibilities does not change the technical information conveyed to the skilled reader; it merely excludes one of the previously disclosed possibilities from the scope of the claims. Nor can it be said that these amendments amount to a new teaching for the skilled reader, namely to select different reaction conditions, i.e. different organic solvent contents, depending on the olefin to be chosen. There are no indications in the application as filed that different effects may be related to the use of an organic solvent content in the area between 600 and 675 g/kg compared to the area between 0.1 to 600 g/kg. Consequently, no “differentiation” between propylene or allyl chloride is apparent.
[2.3.2] Concerning the amended description, [patent proprietor] during oral proceedings explicitly declared that this amended description did not form part of its main request. The description would have to be adapted to the claims if the Board concluded that the requirements of the EPC were met. Consequently, there was no need for the Board to decide on the description as amended during opposition procedure.
[2.3.3] The reference to decision T 1293/03 (sic) cannot support [opponent 1]’s case either. The Board notes that this decision concerns a rather different situation, where it had to be decided whether or not the meaning of an unclear term which was used in the claims and which allowed two ways of interpretation, none of which was clearly and unambiguously excluded by the application as filed, had changed by deleting two examples. With regard to the statement in T 1239/03 [3.3.2], the Board does not dispute the fact that any amendment to a patent presenting the skilled person with information which is not clearly and unambiguously derivable from the application as filed infringes A 123(2). However as set out in point [2.3.1] above, the subject-matter of the main request is clearly und unambiguously derivable from the application as filed and does not add new information for the skilled reader.
[2.4] From the above, the Board concludes that the subject-matter of the main request does not extend beyond the content of the application as filed. Thus, the requirements of A 123(2) are satisfied.
The amendments made result in a restriction of the scope of the claims as granted and therefore of the protection conferred. Hence, A 123(3) is complied with, which was never contested by [the opponents].
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.
0 comments:
Post a Comment