T 2020/07 – Cutting Out Trade Marks

Let us come back to this decision which I presented in a previous post. 

Having found the main request as well as the first and second auxiliary request to lack novelty, the Board examined the third auxiliary request in which the patent proprietor tried to overcome the novelty objection by means of a noteworthy disclaimer.

Claim 1 of this request read (in English translation) :

1. Process for the preparation of polyisobutenylphenol-containing Mannich adducts by

(a) alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 at below about 50°C in the presence of an alkylation catalyst;

(b) reaction of the reaction product from a) with formaldehyde, an oligomer or a polymer of formaldehyde and at least one amine HNR4R5, wherein the radicals R4 and R5 are methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl, sec-butyl, tert-butyl, n-pentyl or n-hexyl,

with the exception of a process wherein step (a) is carried out as follows:

Phenol (203.2 g, 2.16 mol) is melted at 40°C and added to boron trifluoride etherate (73.5 ml, 0.60 mol) in a 5 litre round bottomed flask. Ultravis 10 (1040 g, 1.09 mol), is dissolved in hexane (1863 ml) and the solution is added to the flask containing the phenol via a pressure equalizing dropping funnel, at a rate sufficient to maintain the temperature of the reaction mixture at 22-27°C over a period of three hours. The solution is stirred for an additional 16 hours at room temperature before ammonia (400 ml of 30% w/w aqueous, 2.88 mol) is added. Water (1000 ml) is added and the mixture is stirred. The solution is separated into an organic layer and an aqueous layer using a five litre separating funnel. The aqueous layer is extracted using hexane. Four extraction steps are used, with 500 ml of hexane being used in each extraction step. The organic layers from the four extraction steps are combined and dried over MgSO4 overnight, then filtered through a 12 mm Celite pad. The solvent is removed from the filtrate at 80°C/23"Hg on a rotary evaporator;

and the amine is dimethylamine, N-methyl-ethylamine, or dibutylamine. (Board’s emphasis)

*** Translation of the German original ***

[5] […] Claim 1 of the third auxiliary request also contains a disclaimer which is a complete translation of part A of the example of D1, with the exception of the last sentence (which is a statement on the para to ortho ratio of the PIB phenol mentioned there). According to the [patent proprietor] its only purpose is to exclude the novelty destroying disclosure of D1. […]

[5.1] As the third auxiliary request was filed only during the oral proceedings (OPs), [the Board] first has to examine whether it complies with the criteria for admissibility under the EPC (A 123(2)) and Articles 12 and 13 RPBA.

[5.1.1] According to the RPBA, the statement of grounds of appeal and the reply shall contain a party’s complete case, including all documents related to it. The appeal proceedings are based on these submissions of the parties (Articles 12(1)(2) RPBA). According to Article 13(1) RPBA the admission of any later submissions of the parties are considered at the Board’s discretion. The Board shall take into account the complexity of the new submission, the current state of the proceedings and the need for procedural economy.

[5.1.2] In the present proceedings, sets of claims containing a disclaimer with respect to D1 were first filed as auxiliary requests 6 to 11 on February 27, 2008, together with the statement of grounds of appeal.

[5.1.3] In the light of this fact, the third auxiliary request, which was filed during the OPs, cannot be considered to be an amendment of the submissions of the [patent proprietor] that would increase the complexity of the case or go against the due procedural economy within the meaning of Article 13(1) RPBA. Rather, when filing its statement of grounds of appeal, the [patent proprietor] had already tried to formulate a request allowing to avoid a negative assessment and, as a consequence, the loss of the opposed patent due to a lack of distinction over D1. In the subsequent appeal proceedings it had always maintained and, whenever and to the extent required, amended these auxiliary requests. Given this situation the Board has come to the decision to consider the third auxiliary request to be appropriate (sachdienlich) and to admit it into the proceedings.

[5.1.4] According to decisions G 1/03 and G 2/03 of the Enlarged Board of appeal (EBA), a disclaimer the content of which was not disclosed in the original documents of the application that led to the opposed patent may be allowable in order to restore novelty by delimiting a claim against state of the art under A 54(3) or against an accidental anticipation under A 54(2), or in order to disclaim subject-matter which, under A 52 to A 57, is excluded from patentability for non-technical reasons (see headnote 2.1). A disclaimer should not remove more than is necessary to reach that goal. Otherwise, the claim into which the disclaimer has been inserted violates A 123(2) (see headnotes 2.2 and 2.3). According to headnote 4, a claim containing a disclaimer must meet the requirements of clarity and conciseness of A 84.

[5.1.5] The definition of the process features in paragraphs (a) and (b) of claim 1 of the present third auxiliary request are identical with the definitions of features (a) and (b) in claim 1 of the second auxiliary request. As seen [above], process variant (b) [of claim 1] of the second auxiliary request does not comply with the requirement of novelty pursuant to A 54(1) and A 54(3) with respect to the prior but post-published document D1 […]. Therefore, in order to delimit the subject-matter of the third auxiliary request with respect to D1, a disclaimer was inserted into claim 1 of the second auxiliary request. Thus the disclaimer fulfils the first condition for admissibility of a disclaimer laid down in G 1/03 or G 2/03, respectively.

[5.2] Claim 1 of the third auxiliary request can be separated into two parts: on the one hand, there is the part defining the claimed invention, and on the other hand, the disclaimer excluding a certain subdomain of the domain defined by the first part, and which reads :

“, with the exception of a process wherein step (a) is carried out as follows: […] removed from the filtrate at 80°C/23"Hg on a rotary evaporator; and the amine is dimethylamine, N-methyl-ethylamine, or dibutylamine.”

This wording exactly reflects the structure of the wording describing the example of D1 and also excludes the secondary amines mentioned at the bottom of page 6, to the extent that they are encompassed by the first part of claim 1.

[5.2.1] Considering the arguments filed in written form or made orally, the Board understands that the [patent proprietor] also tried to comply with the further requirement formulated by the EBA, requiring the disclaimer not to exclude more than necessary to restore novelty over D1.

[5.2.2] The Board is of the opinion that any attempt to re-formulate the wording of part A of the example in D1 so that it formed one single sentence, or to even shorten it, would have destroyed the clear structure of the description of the trial in D1 and, therefore, would have led to a lack of clarity (A 84) or even to contradictions between the extent of the disclaimer and the disclosure of the example of D1, and, as a consequence, to a violation of A 123(2).

[5.2.3] It is precisely in view of the need to avoid any discrepancy and, therefore, any factual difference between the wording of the disclaimer and the definition of the part of the prior document to be excluded – and thus to comply with the headnote of decisions G 1/03 or G 2/03 – that the Board considers the use of a sequence of individual sentences according to the original text (Vorlage) in part A of the example of D1 to be justified.

[5.3] However, one essential starting material (the PIB) of the process of D1 to be excluded is only referred to by using its trade name “Ultravis” and a type designation “10”. Such a reference, however, has no clear technical meaning and it is doubtful whether and how a material referred to in this way can be unambiguously distinguished from another material (see T 480/98 [5.3]).

[5.3.1] Such a trade mark (Handelsmarke) is not suitable for unambiguously identifying a material, also because it can be modified at any time over the course of time. However, in the present case, such a modification of the meaning [of the reference] would shift the domain excluded by the disclaimer, i.e. it would also modify the scope of the claim.

[5.3.2] Decision T 762/90 [4.1.1] has expressed concerns against the definition of a material by a brand or trade mark (Warenzeichen) in the following way:

“… the Board has reservations against the use of such a designation in a claim because it is uncertain whether the meaning of this trade mark, even if known on the day of filing, will remain unchanged until the end of the life of the patent.”

[5.3.3] The differences in the definition of “Ultravis 10” in several documents referred to in these proceedings provide evidence that these doubts are justified. According to D1 (claiming a priority of June 22, 1999 […]) this PIB is a “a polyisobutene having a number average molecular weight of about 950 and a methylvinylidene content of about 82%”. According to […] D4 (filed on December 28, 1992) the MN value of “Ultravis 10” is within the same domain, but its methylvinylidene content is of “about 76%”. Example 1 of D8 (claiming a priority of September 5, 1996) refers to it as a “highly reactive' poly isobutene (PiB) (Mw = 1000)”.

[5.3.4] However, in the present case the disclaimer has to exclude the embodiment of the process disclosed in D1, the definition of which is only very general.

[5.3.5] As this cannot be done in an unambiguous way by using the trade name “Ultravis 10” in claim 1 of the third auxiliary request, as shown above, this auxiliary request has to be dismissed on the ground of lack of clarity pursuant to A 84.

This is the second time I see a lack of clarity imported from a prior art document via a disclaimer; another example of a disclaimer-transmitted disease can be found here.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.