T 2284/09 – Not A Repository

This is an appeal filed after the Opposition Division had revoked the opposed patent.

Claim 1 of the main request was identical to claim 1 as granted and read (the amendments with respect to claim 1 as filed are marked):

Process for the preparation of an odour-lean polyether polyol from an unneutralised polyether polyol starting product which is obtained by reacting a starting compound having a plurality of active hydrogen atoms with one or more alkylene oxides, which process comprises consists of the steps of:

(a) contacting the neutralised or unneutralised polyether polyol product with an excess an acid having between 0.001 and 0.5 mole of free acid per kg of polyether polyol which acid has a pKa of less than 5, preferably of less than 3 at a temperature of 80 to 130°C under hydrolysis conditions,

(b) contacting the reaction mixture with water at a temperature of 80 to 130°Cunder hydrolysis conditions, and

(c) recovering the odour-lean polyether polyol.

Claim 1 of the second auxiliary request read (amendments with respect to claim 1 of the main request are marked):

Process for the preparation of an odour-lean polyether polyol from an unneutralised polyether polyol starting product which is obtained by reacting a starting compound having a plurality of active hydrogen atoms with one or more alkylene oxides, which process consists of the steps of:

(a) contacting the unneutralised polyether polyol product with such amount of acide that the amount of free acid will be between 0.001 and 0.5 mole of free acid per kg of polyether polyol which acid has a pKa of less than 5, at a temperature of 80 to 130°C,

(b) contacting the reaction mixture of step (a) with water at a temperature of 80 to 130°, wherein such amount of water is added that a two-phase system can be formed, and

(c) recovering the odour-lean polyether polyol.

The Board found the main request not to comply with the requirements of A 123(2):

[2.1] Claim 1 as granted specifies in step (a) contacting the unneutralised polyether polyol with a defined, fixed amount of free acid, namely between 0.001 and 0.5 mole/kg of polyether polyol.

Claim 1 of the application as filed specifies in part (a) contacting the neutralised or unneutralised polyether polyol with an excess of acid. No numeric quantities of acid are given in any of the claims of the application as filed.

According to page 4 lines 10-30, in particular lines 16-23 of the application as filed with respect to the term “excess” it is stated:

“In practice the term “excess” in relation to the acid added in step (a) refers to such amount of acid that the amount of free acid will be between 0.001 and 0.5 mole acid per kg polyether polyol, preferably between 0.005 and 0.2 mole acid per kg polyether polyol. The expression “free acid” as used herein refers to the acid which has not reacted with any component present in the reaction medium”.

The indicated passage continues to explain that in the case of unneutralised polyether polyol, i.e. that which is defined in claim 1 of the main request, the acid added would initially react with the potassium ions from the initiator present in the polymer. Only after these potassium ions were neutralised would any acid added remain present as “free acid”.

Thus from the indicated passage of the application as filed it emerges that the term “excess acid” is employed to denote the total amount of acid added whereby the definition of said amount is a combination of two quantities defined in different terms:

• an amount necessary to neutralise the unneutralised polyether polyol and
• an extra amount so that the amount of acid remaining after neutralisation is from 0.001 to 0.5 moles of acid per kg of polymer.

The first amount of acid is thus defined in functional or relative terms, namely the amount of acid needed to neutralise the potassium ions remaining from the initiator. The second amount of acid is defined in absolute or quantitative terms and is the amount of acid above (in excess of) the amount required for neutralisation, i.e. the further amount required in order to yield a given acid content (“free acid”) in the neutralised polyether polyol. The amount of “free acid” - which is between 0.001 and 0.5 mole/kg - is thus the amount over and above the quantity of acid necessary to effect neutralisation of the potassium.

From the above it emerges that, contrary to the arguments of the appellant, the terms “excess” and “free acid” as employed in the original application are neither synonymous nor interchangeable.

[2.2] In contrast to the disclosure and definition of the application as filed as discussed in the preceding section, claim 1 of the patent as granted requires the addition to the unneutralised polyether polyol of a defined, fixed amount of “free” acid i.e. between 0.001 and 0.5 mole/kg independently of any functional or relative terms i.e. regardless of whether neutralisation is effected or whether the maximum amount of acid permitted is sufficient to accomplish neutralisation of the polyether polyol.

In the light of the considerations set out in section [2.1] above, with respect to the amount of acid to be added, as denoted in the application as filed by the differing meanings of the terms “free” and “excess” acid, it emerges that there is no disclosure in the application as filed of a process whereby a single, numerically fixed amount of acid is added to the unneutralised polyether polyol. From the difference in wording of claim 1 of the main request as compared to the disclosure of the application as originally filed it emerges that the absence of the functional or relative limitation of the application as filed from the definition of the amount of acid to be added has the consequence that claim 1 of the main request defines a fundamentally different process from that specified in the application as originally filed.

[2.3] The arguments of the appellant that the skilled person would consult the description in order to ascertain what the claim is intended to specify presupposes that there is a reason to consult the description, e.g. some prima facie unclarity or inconsistency in the claim. This is however not the case. On the contrary, the claim of the patent as granted provides a coherent, cogent technical teaching and does not as it stands present the reader with any aspect that would indicate a need for interpretation or clarification. Nor has the appellant explained in what manner the wording of the claim would be deficient and therefore in need of interpretation.

[2.4] The conclusion is that claim 1 of the main request does not meet the requirements of A 123(2).

The main request is refused.

The first auxiliary request was dismissed on the same grounds. The Board then dealt with the second auxiliary request:

A 123(2)

[4] Claim 1 employs the wording of page 4 lines 10-30 of the application as filed with respect to the definition of the amount of acid. Consequently the requirements of A 123(2) are satisfied.

A 123(3)

[5.1] As explained with respect to the main request (section [2.1], above), according to the patent as granted it was required to add a defined, absolute, amount of free acid, namely between 0.001 and 0.5 moles of acid per kg of polyether polyol.

According to claim 1 of the second auxiliary request however, and as explained in section 2.1 above, the amount of acid to be added is made up of two quantities, namely that required to effect neutralisation and an extra amount (defined in absolute terms) in order to provide the amount of acid remaining in the polyether polyol after neutralisation. Thus the amount of acid which claim 1 of the second auxiliary request requires is increased, compared to the amount of acid required by granted claim 1, by the amount needed to effect neutralisation.

Consequently claim 1 of the second auxiliary request confers protection on a process involving addition of a different, greater amount of acid than the claim of the patent as granted. The effect of this amendment of the wording of part (a) of claim 1 is therefore, to enlarge the scope of protection conferred by the claim as compared to the patent as granted. This contravenes A 123(3).

[5.2] The appellant has relied upon decision T 108/91 according to which, in the case of inconsistency between the claim and the totality of the disclosure it is permissible to refer to the description and, pursuant to A 69(1), to rely on the disclosure of the description to amend the claim.

The findings of T 108/91 however are not applicable in the present case since, as explained with respect to the main request, there is no inconsistency between the claim of the granted patent and the description. In particular the examples of the patent fall within the scope of the claim as granted whereas in the case underlying T 108/91 all the examples were outside the scope of the claim. Furthermore decision G 1/93 of the Enlarged Board of Appeal (EBA), which decision refers inter alia to T 108/91, ruled that in the case of a non-disclosed limitation being introduced during examination proceedings (as is the case here), it is not permissible to remove it when so doing would extend the scope of protection. In G 1/93 the role of A 69(1) is also considered and it is concluded that the description is to be used for assessing in particular sufficiency of disclosure and in determining the scope of protection conferred by the claims. However there is no finding in G 1/93 that supports the position of the appellant that the description may be used as a repository from which amendments to the claims can be derived even if such amendments would contravene A 123(3).

Accordingly there is no basis in the EPC or in the case law of the EBA to support the position and approach of the appellant in relying on the description in order to render permissible an amendment to the claims of the patent as granted that results in change of the scope of protection.

The second auxiliary request is refused.

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