Wednesday, 6 February 2013

T 378/11 – Such As

This is an appeal filed by the opponents after the Opposition Division had maintained the opposed patent in amended form.

The Board inter alia discussed clarity and sufficiency of disclosure of the main request, claim 1 of which read:
1. A package comprising a detergent composition enclosed by a water-soluble or water-dispersible packaging material, wherein the detergent composition comprises a carrier fluid selected from hydrophobic oils such as paraffin oil, vegetable oils (e.g. olive oil/sunflower oil) and silicone oil and encapsulated phthalimidoperhexanoic acid (PAP) in granular form, wherein the PAP has a particle size of from 10-500 µm, more preferably 10-300 µm, more preferably 200-300 µm (e.g. about 250 µm). (my emphasis)

A 84 EPC 1973

[4.1] The [opponents] objected that expressions like “e.g.” and “such as” used in Claim 1 would render the meaning of the claim unclear.

[4.2] In the present case the Board cannot share the [opponents’] view. The objected passage reading “the detergent composition comprises a carrier fluid selected from hydrophobic oils such as paraffin oil, vegetable oils (e.g. olive oil/sunflower oil) and silicone oil and encapsulated phthalimidoperhexanoic acid (PAP)...” describes that the detergent composition comprises a hydrophobic carrier oil and encapsulated PAP. The various compounds listed are merely examples of the hydrophobic oils; olive oil and sunflower oil are specific examples of vegetable oils. Thus, the wording per se is considered to be clear.

[4.3] In addition, in the present case the mention of a limited number of examples representing preferred embodiments of one ingredient of the detergent composition is not considered to infringe the requirement of conciseness either.

[4.4] Thus, the requirement of A 84 EPC 1973 is considered to be met by Claim 1 of the main request.

A 83 EPC 1973

[5.1] Claim 1 of the main request refers to “a particle size of from 10-500 µm, more preferably 10-300 µm (e.g. about 250 µm)”. According to the [opponents] the skilled person does not know what the size refers to, i.e. whether the ranges refer to absolute dimensions or to mean values.

Furthermore, if the latter case were to be assumed, it would not be sufficiently disclosed whether the number average particle size, the weight average particle size or similar parameters were to be used. Given this alleged lack of sufficient disclosure the skilled person was considered not to be in a position to re-work the teaching of the patent-in-suit.

[5.2] Although Claim 1 refers to ranges, also a discrete value (“about 250 µm”) is cited. Being aware that particles of exactly one specific particle size are practically not feasible on an industrial scale, it can only be concluded that the values disclosed in Claim 1 refer to the average particle size.

[5.3] This point of view is supported by the examples on file. Examples 1-4 refer to particle sizes of 200, 250 and 500 µm. Starting from these tests carried out with specific average particle sizes it is concluded that a particle size range between 200 and 500 µm gives best bleaching cleaning results (paragraph [0087]). Tablet Example 1 even refers explicitly to the average particle size of 250 µm and the Comparative Example 1 relates to an average particle size of greater than 750 µm, as distinguished from the corresponding absolute particle sizes ranging between 300-1100 µm.

The conclusion to be drawn from these examples is, that the particle sizes defined in the patent-in-suit refer, unless otherwise indicated, to average particle sizes.

[5.4] The [opponents] furthermore argued, that even if the Board would come to the conclusion that average particle sizes were meant, no indication as to the kind of average particle size were given (number or weight average particle size). However, no proof has been submitted by the [opponents], that the lack of indication as to the precise kind of average particle size hinders the skilled person from carrying out the present invention.

[5.5] Even when considering the Annexes 1 and 2 of [opponent 1’s] letter of 31 August 2012 as an adequate determination of the various mean particle sizes, they only show that these mean values differ. On the contrary, it is also shown that at least some of these values fall within the range presently claimed. Thus, the skilled person could select those kinds of mean values falling within the range 10-500 µm in order to prepare a composition according to the present invention. Whether or not the use of two kinds of mean values leads to different results is a matter of clarity, rather than sufficiency of disclosure. However, the Board has no authority to determine clarity of the feature in question, as this feature was already present in the set of claims as granted.

[5.6] Thus, the requirement of A 83 EPC 1973 is considered to be met.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


MaxDrei said...

Can I have from readers their thoughts on how the Board handled obviousness? It leaves me uncomfortable. Am I missing something?

See 7.2 for the OTP: to improve bleaching performance.

The prior art starting point? D6

The characterizing feature? Small PAP particles.

The hint or motivation? D19. It teaches that bleaching performance goes down as you increase particle size. Obvious then, if you want good bleaching, use small particles.

Except that, for the Board, D19 teaches away. I disagree. Why is it that, for the notional person of ordinary skill, it is unthinkable to do anything except maximise stability? What do we know about the stability of the claimed subject matter? Who says it is inadequate? Why doesn't the skilled person do a trade-off between bleaching power and stability. In real life there is always a trade-off, isn't there?

Myshkin said...

I agree with you.

It might well be that stability of the claimed subject-matter is inadequate, but that doesn't seem to be a good argument for inventiveness.

If on the other hand the application had explained that due to some property of the claimed composition, the small particle size would unexpectedly not negatively affect stability, then we would have an inventive step.

As it is, in my view it's just a known trade-off which the skilled person would make.

MaxDrei said...

Thank you Myshkin. Decisions like this leave me doubting the competence of today's DG3 competently to ascend the 30 year old and by now very well-worn steps of the Problem and Solution Approach. What is the world coming to?

Anonymous said...

The Past is not what it used to be :-))