T 487/12 – Likely? So what?

This is an appeal of a patent proprietor whose patent had been revoked.

The decision contains an interesting passage on compliance of the main request with the requirements of A 123(2).

The application as filed had 15 claims, whereby claims 1, 2 and 3 read as follows:

1. A copolymer of ethylene and an alpha olefin having 3 to 10 carbon atoms, said polymer having

(a) a density in the range 0.900 to 0.940

(b) an apparent Mw/Mn of 2 - 3.4

(c) I₂₁/I₂ from 16 to 24

(d) activation energy of flow (Ea) from 28 to 45 kJ/mol

(e) a ratio Ea(HMW)/Ea(LMW)>1.1, and

(f) a ratio g’(HMW)/g’(LMW) from 0.85 to 0.95.

2. A copolymer according to claim 1 having an apparent Mw/Mn in the range 2 to 3 and I₂₁/I₂ from 18 to 24.

3. A copolymer according to claim 2 having an apparent Mw/Mn in the range 2.5 to 3, an activation energy of flow from 30 to 35 KJ/mol, and a ratio Ea(HMW)/Ea(LMW) >1.2.

The patent was granted with a set of 10 claims, whereby claim 1 read as follows, amendments compared to claim 1 as originally filed being underlined:

A copolymer of ethylene and an alpha olefin having 3 to 10 carbon atoms, said polymer having

(a) a density in the range 0.900 to 0.940

(b) an apparent Mw/Mn of 2.5 - 3.0

(c) I₂₁/I₂ from 16 to 24

(d) activation energy of flow (Ea) from 30 to 35 kJ/mol

(e) a ratio Ea(HMW)/Ea(LMW)>1.2, and

(f) a ratio g’(HMW)/g’(LMW) from 0.85 to 0.95

wherein g’ represents the ratio of the measured intrinsic viscosity divided by the intrinsic viscosity of a linear polymer having the same molecular weight, HMW = high molecular weight species, and LMW = low molecular weight species.

According to the patent proprietor, the values of five of the six parameters of claim 1, i.e. parameters (a), (b), (d), (e) and (f) were disclosed at page 3, lines 11-17, of the application as filed. Parameters (a) and (f) were the same throughout the application. The value ranges for the parameter (b), (d) and (e) were within the broadest ranges disclosed for said parameters, i.e. represented preferred ranges. The claimed range of 16-24 for parameter (c) corresponded to the broadest disclosure of this parameter in the application as filed. The combination of the broadest range of parameter (c) with the - in some cases preferred - values of the remaining five parameters was inherently disclosed in the application as filed. Furthermore from examples 1, 4, and 5 it was seen that the values for parameter (e) were 1.55, 1.29 and 1.34, all of which were within the claimed range. Similarly from examples 1-3 it would be seen that parameter (f) had the values 0.912, 0.915 and 0.912. Examples 4 and 5 disclosed all the parameters of claim 1 apart from parameter (f). As the value of parameter (f) reported in examples 1-3 was consistently in the middle of the claimed range it was highly likely that the value of parameter (f) in examples 4 and 5 was also within the claimed range. Consequently the skilled reader could derive the subject-matter of claim 1 from a full reading of the application as filed.

The Board won’t allow such reasonings:

A 123(2)

[2.1] The preamble and features (a), (c) and (f) of claim 1 are disclosed in originally filed claim 1 and at page 2, line 28 - page 3, line 3 of the description of the application as filed. The definitions of g’, HMW and LMW are disclosed at page 4, lines 5-20.

[2.2] The specified values of features (b), (d) and (e) of present claim 1 are disclosed in originally filed claim 3. However in the application as originally filed claim 3 is dependent not on claim 1 but on claim 2 which specifies a value of feature (b) of 2 to 3 and a value of feature (c) of 18 to 24 […].

[2.3] Consequently the ranges for features (b), (d) and (e) specified in operative claim 1 are originally disclosed only in combination with a range of feature (c) of from 18-24, not however with the broader range of 16-24 as now specified in claim 1.

[2.4] The description of the application as filed does not provide any basis for the presently claimed subject matter since in the passage starting at page 2, line 27, and concluding at page 3, line 17, the subject matter of each of claims 1, 2 and 3 is explicitly set out as closed sets of six features.

Thus the description and the claims of the application as filed are consistent with each other in that only certain combinations of values for features (a)-(f) are permitted. There is no statement, express or implied, that the various ranges of values for features (a)-(f) can be freely combined independently of each other. In other words, according to the disclosure of the application as originally filed there is no indication that the ranges of values of the six features (a)-(f) are not interdependent.

Operative claim 1 therefore discloses a combination of values which is not disclosed as such in the description or claims of the application as filed.

[2.5] Recourse to the examples does not lead to any other conclusion.

The examples each represent a single point disclosure, i.e. a specific combination of values for each of the six parameters mentioned in present claim 1.

Since, in view of the considerations set out in section [2.4] above, only certain combinations of the features (a)-(f) are permitted, it has to be concluded that individual parameters from the examples may not be isolated and generalised.

Further, none of the examples discloses all of the six features specified in the claims, meaning that it is not even established that any of the examples actually fall within the scope of the claims.

Considerations, as advanced by the [patent proprietor], of the likelihood or probability of certain parameters being within the scope of the claims are not appropriate when considering the question of compliance with the requirements of A 123(2), as held for example in decision T 383/88 [2.2.2].

The main request therefore does not meet the requirements of A 123(2) and has to be refused.

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

The file wrapper can be found here.