Tuesday 3 January 2012

T 1841/09 – A Dubious Combination


In this case the opponent appealed against the decision of the Opposition Division (OD) to reject the opposition.

Claim 1 of the patent as granted read:
1. An amine dispersant containing one or more amino and/or imino groups, a poly(oxy-C1-6-alkylene carbonyl) chain (POAC chain) obtainable from two or more different linear hydroxycarboxylic acids or lactones thereof and a residue of an ethylenically unsaturated group wherein the amino and/or imino group is attached via the ethylenically unsaturated group, including salts thereof.
According to the opponent, the subject-matter of granted claim 1 differed in only one feature from each of examples 14 and 16 of document D1: the alkyl rest of the second acids or lactones thereof used to prepare the POAC chain should be
  • linear and not branched as in example 14,
  • a C1-6 alkylene and not C18 as in example 16.
The substitution of the differing feature by one mentioned in the list of equivalent alternatives given in the description of D1 automatically resulted in the claimed subject-matter. According to T 332/87 and other decisions, it was not necessary for a document explicitly to mention a claimed combination to be novelty destroying. Therefore D1 took away the novelty of the claimed subject-matter. Nor could the claimed subject-matter be regarded as a selection invention since the features replacing the ones in examples 14 and 16 were explicitly disclosed in D1 and were chosen from only one list of alternative possibilities. Reference was made to the Guidelines, C-IV 9.8.

The Board did not agree:

Modification of examples 14 or 16 of D1

[2.1.1] D1 discloses dispersants comprising amino groups and a poly(oxy-alkylene carbonyl) chain wherein the amino groups are attached to said chain via the residue of an ethylenically unsaturated group […].

[2.1.2] Example 14 of D1 discloses the preparation of a dispersant obtained by reacting a polyethyleneimine having a molecular weight of 10,000 (SP200, manufactured by Nihon Shokubai Kagaku Co. Ltd.) and a polyester prepared from epsilon-caprolactone and 4-methylcaprolactone according to Preparation Example 5. The dispersant thus obtained comprises a POAC chain obtained from two different lactones of C1-6 hydroxycarboxylic acids, the one derived from 4-methylcaprolactone being non-linear.

Example 16 of D1 discloses the preparation of a dispersant obtained by reacting polyethyleneimine SP200 and a polyester prepared from epsilon-caprolactone and 12-hydroxy-stearic acid according to Preparation Example 7. The dispersant thus obtained comprises a POAC chain obtained from a lactone of a C1-6 hydroxycarboxylic acid and from a C18 linear hydroxycarboxylic acid, which is not a poly(oxy-C1-6-alkylene carbonyl) chain as required by claim 1 of the patent in suit.

Hence, neither example 14 nor example 16 of D1 discloses a dispersant according to claim 1 of the patent in suit.

[2.1.3] D1 […] further describes a list of lactones that may be also employed in the addition reaction used to prepare the POAC chain in example 14, said list including lactones of linear C1-6 hydroxycarboxylic acids (e.g. (-caprolactone, (-valerolactone, (-propiolactone, (-butyrolactone) or of branched C1-6 hydroxycarboxylic acids (e.g. (-methyl-(-valerolactone, 4-methylcaprolactone, 2-methylcaprolactone).

A similar list is given [… in] D1 regarding the lactone compounds that may be employed in the addition reaction used in example 16. Besides, according to [D1], the hydroxycarboxylic acid suitably used in example 16 may be chosen from a list of several alternatives comprising compounds having a linear C1-6 rest (e.g. (-hydroxyvaleric acid, (-hydroxy caproic acid, lactic acid, glycolic acid), a branched C1-6 rest (e.g. 2-2-dimethylolpropionic acid) or a linear rest falling outside the requirement of C1-6 for the POAC chain recited in claim 1 (e.g. 12-hydroxystearic acid, salicylic acid).

[2.1.4] There is however no disclosure in D1 to combine specifically example 14 with that part of [the description] directed to the specific lactones as defined in claim 1 of the patent in suit. In particular, D1 contains no motivation to substitute the 4-methylcaprolactone used in example 14, which is branched, by a linear hydroxycarboxylic acid or lactone thereof. There is also no hint in D1 to use a linear hydroxycarboxylic acid or lactone thereof as defined in present claim 1 in addition to the two monomers used in example 14. In this regard, it is noted that the addition of such a monomer would lead to a POAC obtained from three units, one of which not being according to claim 1 of the patent in suit, so that it would not be novelty destroying.

[2.1.5] D1 further does not contain any incentive to modify the particular process of example 14 by selecting two lactones according to present claim 1 as monomers for the preparation of the POAC out of the whole list given in D1, which also includes other lactones that are equally suitable.

[2.1.6] The same is valid for the substitution of the 12-hydroxy-stearic acid in example 16 by a linear hydroxycarboxylic acid or lactone thereof according to present claim 1 on the basis of the list of D1, page 7, lines 41-43 and/or lines 48-52.

Multiple selections within the ambit of D1

[2.2] The modification of a specific example (either example 14 or example 16) on the basis of a specific passage of the description of D1 […] in order to arrive at the subject-matter now being claimed amounts to a multiple combination of individual elements that has not been explicitly mentioned in D1. Indeed, one has, first, to choose a specific example among all those of D1, secondly, to choose to substitute either the 4-methylcaprolactone used in example 14 or the 12-hydroxy-stearic acid used in example 16, and thirdly, to choose a compound according to claim 1 of the patent in suit within the list of alternative hydroxycarboxylic acids and lactones recited in D1 which is not limited to those compounds […].

The same conclusion would be reached if one would consider e.g. claims 1 and 2 of D1, which both disclose dispersants comprising a POAC chain obtainable from hydroxycarboxylic acids or lactones thereof: here, one would have to choose to prepare a POAC chain from two compounds according to claim 1 of the patent in suit within the list of alternative compounds defined in either formula 1 (see in particular the definition of the R3 group) or in claim 2, which are not all according to the definition of claim 1 of the patent in suit. This modification would amount to at least two selections within a list of equivalent alternatives.

According to decision T 12/81 such a multiple selection confers novelty since it represents a combination of features that was not specifically disclosed in the prior art.

In decision T 332/87, novelty was denied considering the modification of an example illustrative of the invention with a general teaching disclosed in the description of the same prior art document concerning the mere optional addition of a filler applicable to any composition claimed, including those specified in the examples. T 332/87 describes, thus, a different situation from the present case, wherein the objection of lack of novelty raised was based on the modification of an example of a prior art document by selecting in the description of the same document a specific monomer among a list of alternative compounds, not all of which would lead to the subject-matter as claimed. Therefore the argument of the appellant based on T 332/87 […] can not be followed.

[2.3] For these reasons, the Board considers that D1 does not contain a direct and unambiguous disclosure which inevitably leads the skilled person to a dispersant as defined in claim 1 of the patent in suit. Hence, the subject-matter of claim 1 of the patent in suit is novel.

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