T 532/08 – Admittedly

Disclaimers inserted during examining proceedings also create presumptions concerning the exclaimed subject-matter, as the appellant in the present case had to find out.

The patent proprietor appealed against the decision of the Opposition Division to revoke the patent under consideration.

Claim 1 of the main request before the Board read (in English translation; the differences with respect to claim 1 as granted are emphasized):

Crop protection composition, formulated as powder, granules or as a liquid, aqueous suspension, of active compounds having foliar or systemic action, characterized in that it comprises,

in the case of herbicide preparations, at least one herbicide from the groups of the urea derivatives or sulphonylureas, the carbamates, biscarbamates, diphenyl ethers, pyridolylacetic acid derivatives, pyridazines, triazines, triazinones, uracils, benzofuran derivatives, glyphosate or glufosinate,

in the case of fungicide preparations, at least one fungicide from the group of the morpholines, azoles, phthalimides or piperidines,

in the case of insecticide preparations, at least one insecticide from the group of the pyrethroids, carbamates or organophosphates,

or possible salts or esters of the abovementioned groups of active compounds,

at least one inorganic adsorbent and at least one surfactant from the group of the ethoxylated C6- to C20- alcohols, preferably C8- to C16-alcohols, the ethoxylated castor oils or the alkyl ether sulphates, wherein the sum of the proportions of adsorbent(s) and surfactant(s) is from 5.5 to 45.0% by weight, preferably from 15.0 to 25.0% by weight, and wherein the proportion of active compounds is from 5.0 to 75% by weight

the combination of metamitron technical (I), ethofumesatetechnical (II), phenmedipham technical (Ill), alcylaryl sulfonate (IV), polyoxyethylene-(6)-tridecyl ether (V), highly disperse pricipitated silicic acid (VI) and kaoline W (VII) in the composition:

and the combination of 33,93% by weight of propachlor (94%), 11,31% by weight of atrazine (95%), 4,00% by weight of Hi-Sil 2338, 1,00% by weight of kaoline, 2,80% by weight of Pluronic 1058, 1,00% by weight of lgepon T778, 1,00% by weight of CaCI2 x 2 H20, 8,00% by weight of ethylene glycol, 0,10% by weight of Corak 1008 and 36,86% by weight of water being excluded.

The Board found the underlying amendments to violate A 123(3):

*** Translation of the German original ***

[3.1] The [opponent] criticized the introduction of the feature related to the proportion of active compound in % by weight because the amendment was not occasioned by a ground for opposition under A 100.

[3.2] The Board does not share this opinion and considers this amendment to be an attempt to delimit [the subject-matter] with respect to the prior art and, therefore, to overcome the novelty objections that have been raised, in particular by the [opponent]. Because of the outcome of the present proceedings, however, this point does not need to be discussed in more detail.

[3.3] Claim 1 of the impugned patent, which is directed at a crop protection composition, formulated as powder, granules or as a liquid, aqueous suspension, contains two disclaimers.

The first disclaimer refers to the exclusion of combinations of components (I) to (VII) the composition of which is given in the form of a table, wherein the sum of the individual components adds up to 100%. None of the components (I) to (VII) is water.

The second disclaimer refers to a combination of combination of 33,93% by weight of propachlor (94%), 11,31% by weight of atrazine (95%), 4,00% by weight of Hi-Sil 2338, 1,00% by weight of kaoline, 2,80% by weight of Pluronic 1058, 1,00% by weight of lgepon T778, 1,00% by weight of CaCI2 x 2 H20, 8,00% by weight of ethylene glycol, 0,10% by weight of Corak 1008 and 36,86% by weight of water.

[3.4] In claim 1 as amended, which is only directed at liquid, aqueous suspensions, both disclaimers were deleted.

As far as the first disclaimer was concerned, the parties did not agree on whether this disclaimer only concerned solid formulations or whether, as was submitted by the [opponent], it also comprised liquid, aqueous suspensions. In this context, the Board agrees with the [patent proprietor] that the first disclaimer, wherein water is absent, is directed at solid formulations and not at liquid, aqueous formulations. In view of the negative outcome of the decision, however, the Board sees no need to discuss this point in more detail.

[3.5] The [patent proprietor] has not contested that the second disclaimer is directed at a liquid, aqueous suspension. This suspension undisputedly contains an active compound and adsorbents according to the claim (anspruchsgemäß) in addition to CaCl2 and ethylene glycol. It does not explicitly mention surfactants according to the claim, but the liquid, aqueous suspension further contains components referred to by the trade names Pluronic 105®, Igepon T77® und Corak 100®. It is only possible to omit this disclaimer without extending the scope of protection if there is no doubt that the components referred to by these trade names do not comprise any of the claimed surfactants.

[3.6] The [patent proprietor] pointed out that the suspension excluded by means of the disclaimer did not contain surfactants according to the claim and that, moreover, the feature concerning the sum of proportions of adsorbents/surfactants was not fulfilled. The disclaimer mentioned Pluronic 105® und Igepon T77® as surfactants, i.e. a block polymer of propylene oxide and ethylene oxide, and sodium-N-methyl-N-oleoyl taurate, respectively. Corak 100® was an anti-foaming agent based on silicone and was, therefore, not suitable as a surfactant according to the claim. Moreover, the [patent proprietor] explained that the [opponent] had not provided any proof for the assertion that the two compounds mentioned in the disclaimer and referred to by the trade names were surfactants according to the claim.

[3.7] It has to be observed that as far as the surfactants according to the claim are concerned, claim 1 of the main request is the same as claim 1 of the impugned patent but also of the application as filed. As a given composition has been excluded by means of a disclaimer in the course of the grant proceedings, one has to assume – as the opponent has done – that the aqueous suspension that has been excluded by means of the disclaimer comprises surfactants according to the claim and that the feature of the sum of proportions of adsorbents/surfactants is fulfilled. If the [patent proprietor] now claims that this is not the case, and that this also held true for the claim as granted, then the [patent proprietor] bears the burden of proof for this assertion.

[3.8] However, the [patent proprietor] has not submitted any evidence establishing, with the required certainty, that the suspension excluded in the impugned patent does not comprise surfactants according to the claim or that the feature concerning the sum of proportions of adsorbents/surfactants is not fulfilled, respectively. Moreover, it has to be noted in this context that it cannot be excluded that products characterised by trade names or their composition change in the course of time but keep the same name. Therefore, it cannot be clearly defined what is excluded by a disclaimer referring to trade names.

[3.9] For the above reasons, it cannot be excluded with sufficient certainty that the liquid, aqueous suspension of the second disclaimer contains surfactants according to the claim and fulfils the feature concerning the sum of proportions of adsorbents/surfactants. The Board comes to the conclusion that the amendment in claim 1 of the main request extends the scope of protection and, therefore, violates A 123(3).

Incidentally, this is another reminder (see also another recent post) that disclaiming products identified by their trade names is a very dangerous enterprise.

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

The file wrapper can be found here.