T 738/10 – A Missing Verb

This appeal was filed after the Opposition Division had rejected the opposition against the patent under consideration.

Claim 1 of the main request (identical to claim 1 as granted) read:

A process for preparing a 3-functionalized propylsilane by addition of an allyl compound of the general formula

H₂C=CH-CH₂X

where X is selected from the group consisting of Cl, Br, I, F, CN, SCN, SH, SR, OH, NRR¹ and OR and R and R¹ are each independently (C₁-C₆)-alkyl or (C₃-C₇)-aryl, onto a silane of the formula

R²R³R⁴SiH

where R², R³ and R⁴ are each independently selected from the group consisting of hydrogen, halogen, (C₁-C₆)alkyl, (C₁-C₆)-haloalkyl, (C₃-C₆)-allyl, (C₁-C₄)-alkoxy, phenyl, aryl and aralkyl,

at a reaction temperature in the range from 0°C to 200°C and at a pressure in the range from 200 m bar to 10 bar in the presence of a catalyst, characterized in that the catalyst is a supported multi-element catalyst [? – the verb is missing from the German claim] an activated carbon, coke or graphite support, platinum and at least one further element selected from the group consisting of titanium, zirconium, hafnium, vanadium, chromium, molybdenum, tungsten, manganese, rhenium, iron, ruthenium, osmium, cobalt, rhodium, iridium, nickel, copper, silver, gold, cobalt, zinc, aluminium, gallium, indium, tin, lead, antimony, bismuth, samarium and sulphur.

Board 3.3.01 had to examine compliance with A 100(c):

*** Translation of the German original ***

[3.1] According to the communication of grant dated October 11, 2004, the verb “containing” is absent from the specification of the patent in suit. The OD has expressed the opinion that, considering the entire text of the claim as well as paragraph [0009] of the patent in suit, the missing verb was to be read as “containing”. Moreover, it has referred to passages in the application as filed which provide support for the claims of the patent in suit, including the verb “containing”.

[3.2] The [opponent] has criticised this opinion of the OD concerning the addition of the verb “containing” as a violation of A 100(c). It referred to the written submission of the [patent proprietor] dated June 3, 2003, and pointed out in this respect that the [patent proprietor] itself had declared during the examination proceedings (Erteilungsphase) that claim 1 as maintained found its support in original claims 1 and 2. According to original claim 2 the further elements were limited to the elements cited in this claim. Further elements were excluded. This limitation corresponded to the intention of the [patent proprietor] on which third parties could rely, and which ought not to be ignored.

[3.3] The Board shares the opinion of the OD as to how claim should be read, in particular in view of paragraph [0009] of the patent in suit which has the very same wording as claim 1 as granted, plus the missing verb, which, according to the Druckexemplar is the verb “containing”. The way in which claim 1 is drafted also requires a verb such as “containing” rather than “being” or “consisting” at the end of the characterising part.

[3.4] Claim 1 is supported by claim 1 as filed in connection with page 4, lines 5 to 17 and page 5, first paragraph, of the original description.

Original claim 1 refers to a process characterised by the presence of a supported multi-element catalyst one element of which is platinum. This claim does not contain any further limitation. In comparison claim 1 as granted is limited to a supported multi-element catalyst containing certain supports, platinum and at least one further element from a list of elements […]. The definition of the catalyst is found in page 4, lines 5 t 6 of the original description:

“The catalyst of the process according to the invention contains a support, platinum and at least one further element.” (emphasis by the Board)

The possible identity of the “further elements” at least one of which is contained is disclosed on page 5, first paragraph, of the original application.

“As further elements … can be applied. … The elements in addition to platinum can be applied alone (einzeln) or in any combination.”

This paragraph does not teach that further elements are excluded, be it only because the verb “can” is used. The limitation regarding the support material has its basis on page 4, lines 7 to 17 of the original description.

[3.5] Moreover, the Board notes that in its letter of June 3, 2003, the [patent proprietor] not only refers to the original claims 1 and 2 but also to the original description. It is true that the page number is missing, but the reference to the line number makes it clear that the reference has to be to the above mentioned passage on page 4 (lines 5 to 6) of the description. Moreover, the set of claims enclosed with the letter, according to which the catalyst [is a catalyst] “containing at least one further element selected from the group of …” shows that the [patent proprietor] did not at all intend to limit the claims in the way suggested by the [opponent].

[3.6] Thus the Board comes to the conclusion that the subject-matter of the patent in suit does not extend beyond the [subject-matter disclosed in] the original application documents and, therefore, that the ground for opposition based on A 100(c) does not make it impossible to maintain the patent in suit.

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