T 1836/09 – Whenever, Wherever

This appeal was filed by the patent proprietor after the Opposition Division had revoked his patent.

Claim 1 of the main request before the Board read (the amendment with respect to claim 1 as granted is apparent):

1. A flexible biaxially stretched, heat shrinkable polymeric film having at least one layer comprising a blend of at least three polymers comprising:

20 to 85 weight percent of a first polymer having a melting point of 80 to 928°C comprising at least one copolymer of ethylene and hexene-1;

5 to 35 weight percent of a second polymer having a melting point of 115 to 128°C comprising at least one copolymer of ethylene and at least one alpha-olefin; and

10 to 50 weight percent of a third polymer having a melting point of 60 to 110°C comprising at least one copolymer of ethylene and a vinyl ester, an alkyl acrylate, acrylic acid, or methacrylic acid; wherein said first and second polymers have a combined weight percentage of at least 50 weight percent, said weight percentage being based upon the total weight of said first, second and third polymers.

The question arose whether this claim complied with the requirements of A 123(2):

[2.1] The subject-matter of Claim 1 of the main request differs from Claim 1 as granted in that the melting point range for the first polymer has been amended from 80 to 98°C to 80 to 92°C.

The [opponent] argued that the new range of 80 to 92°C had not been disclosed in the application as filed in combination with the other features of Claim 1 as granted.

[2.2] However, it is apparent from the original application as a whole that a melting point range of 80 to 92°C for the first polymer is a generally preferred range. Thus, the passage on page 11, lines 11-12, under the heading “Summary of the invention”, discloses that:

“In various embodiments the inventive film comprises a blend including: (a) a first polymer having a melting point of 80-98°C, preferably 80-92°C, comprising a copolymer of ethylene and hexene-1;” (emphasis added).

Further, when it comes to describing the first polymer in detail, it is mentioned on page 18, lines 10-11, that:

“The first polymer of the preferred film blend has a melting point of 80 to 98°C, preferably 80 to 92°C, and comprises an ethylene hexene-1 copolymer” (emphasis added).

The board concurs with the appellant that the skilled person considering the application as filed as a whole (following the consistent case law of the boards of appeal of the EPO; cf. T 860/00) would directly and unambiguously infer from this document that the melting point range of 80-92°C of the first polymer is implicitly included as the preferred range for the first polymer wherever it is mentioned in the original document.

This applies also to the embodiment of Claim 1 as granted, which is derivable from a combination of Claim 1 as filed with the embodiment disclosed in the paragraph bridging pages 22 and 23 of the application as filed.

[2.3] Consequently, the further limitation of the melting point of the first polymer by the preferred range of 80-92°C, which leads to the subject-matter of Claim 1 of the main request, fulfils the requirements of A 123(2).

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