Interpretational Spotlight: “Produced By”

The appeal was filed by the patent proprietor after the Opposition Division (OD) had maintained the patent in amended form.

The Board did not admit the main and first auxiliary request into the proceedings and then considered the second auxiliary request, claim 1 of which read:

An extrusion coating structure provided on a substrate comprising at least one layer of bimodal polyethylene composition, characterized in that the composition is produced by

• subjecting ethylene, optionally with hydrogen and/or comonomers to polymerization or copolymerization reactions in a multistage polymerization sequence of successive polymerization stages;
• carrying out the polymerization reactions in the presence of a single-site metallocene catalyst capable of forming a composition comprising
• a low molecular weight component with a MFR2 of 20g/10min or more and a density higher than the density of the composition, and
• a high molecular weight component, said composition having a melt flow rate MFR2 of 5g/10min or more and a density of 915 to 960 kg/m³;

whereby said bimodal polyethylene composition comprises the low molecular weight component in an amount of 60 to 40 wt.-% and the high molecular weight component in an amount of 40 to 60 wt.-%, said layer of bimodal polyethylene composition exhibiting

• tensile strength machine/transverse direction of 20/20 MPa or more,
• tear strength machine/transverse direction of 1.0/1.5 MPa or more, and
• puncture strength of 900 N/mm or more, preferably 1000 N/mm or more. (my emphasis)

The decision contains a noteworthy remark on the expression “produced by”:

[4.2.1] Claim 1 is directed to an extrusion coating structure provided on a substrate comprising at least one layer of bimodal polyethylene composition whereby the composition is characterised in that “it is produced by” a certain process.

It is established case law (Case Law, supra, section II.B.6, in particular decision T 411/89 [2.1-2]) that such wording is to be interpreted only to the extent that the product is “producible” or “obtainable” by such a process in so far as the process does not lead to recognisable differences in the product. Since the patent in suit gives no indication that different process features would lead to different product properties, these process features cannot serve to restrict the subject matter of the claim. Hence, the wording “produced by” does not exclude that the product can be obtained by other processes.

NB: In T 411/89, it was the opponent that filed the appeal against the maintenance of the opposed patent in amended form. The opponent objected to the amendment of claim 14 during the opposition proceedings.

Claim 14 as granted read:

14. Fatty product entirely comparable to butter, both in its use and in its behaviour, obtained by

(obtenu par) the process according to any one of Claims 1 to 10, or in the equipment according to any one of Claims 11 to 13. (my emphasis)

Claim 14 as maintained by the OD read:

14. Fatty product entirely comparable to butter, both in its use and in its behaviour, which can be obtained by (obtenable par) the process according to any one of claims 1 to 10, said product containing more than about 43% of plant fatty substance compared with the total fatty substance. (my emphasis)

Here is what the Board said, in English translation:

[2] The [opponent] has objected  that claim 14 of the patent under consideration has been amended in the course of the opposition proceedings such as to extend the [scope of protection] of the patent. Therefore, it has to be examined whether the amendments of the main product claim comply with the requirements of A 123(3).

[2.1] Present claim 14 does not contain any reference to a product “obtained … in the equipment according to any one of Claims 11 to 13”. The deletion of this choice clearly constitutes a limitation of the claimed subject-matter because only the first option described initially (product-by-process) as been retained in new claim 14, which is undisputed by the [opponent].

[2.2] The claim under consideration is a claim wherein the product is defined by a reference to a process allowing to produce it; it has to be interpreted as a claim directed at the product as such because the reference to the process is only a means intended to characterise the claimed object, which is a product. The fact that the expression “obtained”, which had been used initially, has been transformed to “obtainable” (susceptible d’être obtenu) does not at all modify the definition of the product at which the claim is directed insofar as the process referred to has clearly (de toute evidence) remained the same. Therefore, if the definition or characterisation of the product is the same before and after the amendment, one has to conclude that the claimed product is the same. As a consequence, the argument according to which the amendment has led to an extension of the [scope of] protection is untenable.

Should you wish to download the whole decision (T 868/09), just click here.

The file wrapper can be found here.