T 363/11 – Not More

This is an appeal against the revocation of the opposed patent.

The Board found claim 1 of the main request (claims as granted) not to comply with A 123(2) because “dissolved matter” had been replaced by “dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100”. It then dealt with the first auxiliary request, claim 1 of which read (the differences with respect to claim 1 of the main request are highlighted):

A packing material for high-performance liquid chromatography, which comprises a polysaccharide derivative coated on a carrier, wherein 80 to 100% of the hydroxyl groups of the polysaccharide of the polysaccharide derivative are substituted with a substituent, and which is characterized in that the amount of dissolved matter derived from the low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 contained in said polysaccharide derivative is not more than 0.1 mg as determined by passing a mixed solution of n-hexane/2-propanol in a volume ratio of 9/1 through a column having an inner diameter of 1 cm and a length of 25 cm at a flow rate of 4.7 ml/min and at a temperature of 40° C, taking 564 ml of the solution and concentrating the solution to dryness.

A 123(2)

[3] Claim 1 is a combination of original claims 1, 2 and 5. The Board thus concludes that the subject-matter of claim 1 of this request does not extend beyond the content of the application as filed, such that the requirements of A 123(2) are satisfied. This was not contested by the [opponent].

A 123(3)

[4.1] A 123(3) provides that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred. In order to decide whether or not an amendment of the patent in suit satisfies this requirement, it is necessary to compare the protection conferred by the claims as granted, with that of the claims after amendment.

[4.2] Claim 1 is directed to a packing material for high-performance liquid chromatography, which comprises a polysaccharide derivative coated on a carrier, and which is characterized in that the amount of dissolved matter derived from the polysaccharide derivative is not more than 0.1 mg as determined by a specific method (emphasis added).

Claim 1 of the patent as granted is directed to a packing material for high-performance liquid chromatography, which comprises a polysaccharide derivative coated on a carrier, and which is characterized in that the amount of dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 contained in said polysaccharide derivative is not more than 0.1 mg as determined by the same method as in auxiliary request 1 (emphasis added).

[4.3] Thus the question to be answered is whether claim 1 of auxiliary request 1 covers any packing materials which were not covered by claim 1 as granted. It thus needs to be examined whether the replacement of the term “dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 is not more than 0.1 mg” by the term “dissolved matter is not more than 0.1 mg” results in an extension of the protection conferred.

[4.4] When considering this question, it must be borne in mind that the feature concerned is a negative feature, in the sense that it defines embodiments which are excluded from the claim.

[4.5] The term “dissolved matter” as used in the patent in suit completely embraces dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100 […]. Thus those embodiments wherein the amount of dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100 is not more than 0.1 mg are automatically excluded from the scope of claim 1 if the amount of all dissolved matter may not be more than 0.1 mg, the method for determining the amount being the same in each case. Consequently, more embodiments of a packing material are excluded from claim 1 of auxiliary request 1 than from claim 1 as granted. Its scope is thereby reduced vis-à-vis granted claim 1.

[4.6] The [opponent] argued that the feature “the amount of dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 contained in said polysaccharide derivative is not more than 0.1 mg” in granted claim 1 should not be read as a negative feature, but rather as a positive feature, namely that the polysaccharide derivative coated on the carrier must contain >0 and <=1 mg of dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100, whereas in claim 1 of auxiliary request 1, the polysaccharide was no longer required to contain this particular low molecular weight matter.

The Board, however, holds that when a material (M) is defined as containing not more than a certain amount of a certain compound (A), then this does not mean that it must contain a finite quantity of compound (A), but merely that the amount of (A) may not exceed a certain limit. This situation is to be distinguished from a claim positively formulated as comprising M and A, wherein the amount of A may not exceed a certain limit. Thus, since claim 1 as granted does not have to contain any dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100, the [opponent’s] argument must be rejected.

[4.7] Thus, the Board concludes that the scope of protection conferred by claim 1 and dependent claims 2 to 5, and of claims 6 to 8, which relate to a process for producing the packing material of claims 1 to 5, has not been broadened vis-à-vis that of the claims as granted, such that the requirements of A 123(3) are satisfied.

The file was then remitted to the OD for further prosecution.

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