T 809/07 – Trouble Between Examples

 Claim 1 of the main request was identical with claim 1 as granted:

Paint and coating material system comprising

a) at least one solid component comprising at least one organic or inorganic white, black or chromatic pigment, organic or inorganic fillers, or mixtures thereof, and

b) at least one binder component;

characterised in that the components of the system in water, with an energy input of less than 150 J/cm3, based on the sum of the volumes of the components and water, result in an aqueous dispersion having a fineness-of-grind (Körnigkeit) of <60 μm (determined in accordance with ISO 1524: 1983).

In the following passage the Board deals with the ground for opposition under A 100(b) (insufficiency of disclosure).

** Translation from the German **

[3.1] Present claim 1 describes the invention via the definition of components a) and b) and via the condition “that the components of the system in water, with a specific energy input of less than 150 J/cm3, based on the sum of the volumes of the components and water, result in an aqueous dispersion having a fineness-of-grind (Körnigkeit) of <60 μm (determined in accordance with ISO 1524: 1983).”

This condition fixes values below which the parameters “energy input” and “fineness-of-grind” have to lie. In order to obtain a composition according to claim 1, the skilled person has to know, without any inventive input (Zutun), how to choose and process, as the case may be, the components so as to make the parameters lie below these values (see T 516/99 [3]). When carrying out the claimed invention, the skilled person may rely on the disclosure of the patent as well as his/her common general knowledge on the date of priority of the patent (see T 219/85 [2.3.2]).

[3.2] The [patent proprietors] expressed the opinion that in order to obtain the domains fixed in claim 1 for the parameters “energy input” and “fineness-of-grind”, it was sufficient to provide the solid components with desired fineness (Feinverteilung) of <60 μm. Paragraph [0098] of the patent contained the instructions allowing the skilled person to grind the solid components such as to obtain this fineness.

It may be assumed that the fineness of the solid components has an influence on the energy input that is required in order to obtain a dispersion having a fineness-of-grind of <60 μm when dispersing in water. However, claim 1 is not limited with respect to the particle size (Korngrößen) of the components. Moreover, even when the components are ground to particle sizes of <60 μm it cannot be guaranteed that such a composition fulfils the requirements defined in the characterising part of claim 1.

The [opponent] is right in referring to paragraph [0014] of the patent:

“Solid component a) is not limited in respect to its form. In particular, it is possible to use powders, granules, slugs (Schülpen) and pellets.”

However, the last three forms mentioned in this paragraph are obtained by granulating, compressing and pelletising, i.e. they are agglomerated. Thus, even when the component is ground to a particle size of <60 μm, these forms have a secondary particle size that is significantly greater than 60 μm.

Moreover, it is precisely paragraph [0098] cited by the [patent proprietors] that states that the solid components tend to form aggregates or agglomerates, for example when being dried after the preferred wet crushing treatment. […] Whether such secondary particles which have grown through agglomeration can be broken with an energy input of less than 150 J/cm3 when being dispersed in water, as required by claim 1, and if so, how it can be done, is something that the skilled person cannot find neither in the patent, nor in the common general knowledge.

Comparative examples 1 and 2 of the patent provide evidence that the skilled person encounters problems when he/she tries to obtain “energy input” and “fineness-of-grind” values as required in claim 1. In these examples much higher energy input was required in order to obtain the desired fineness-of-grind (497 J/cm3 in comparative example 1 and more than 4000 J/cm3 in comparative example 2 […]). The examples and comparative examples of the patent do not contain information on the particle size distributions of the starting materials used or the fineness-of-grind of the components before they are dispersed in water. Thus the argument of the [patent proprietors] according to which additional grinding work (Zerkleinerungsarbeit) was required in the comparative examples is not supported by the patent. Therefore, the skilled person cannot find in the examples and comparative examples of the patent how to proceed in order to generally avoid the high energy input which is required in the comparative examples.

As a consequence, the skilled person cannot anticipate how a particular combination of the components a) and b) will behave with respect to the parameters mentioned in the characterising part of claim 1. If he/she wishes to implement the subject-matter of claim 1 over its whole breadth, he/she has to find out via extensive trials how to choose components a) and b) and how to process them so that the compositions fulfil the requirements set out in this claim. This, however, cannot be expected from (zuzumuten) the skilled person (see T 516/99 [3.1, last two paragraphs]).

[3.3] The [patent proprietors] have pointed out during the written proceedings that the comparative trials filed on February 1, 2007 show that the opponent was capable without further ado to “establish that certain examples taken from the prior art have an energy input lying in the claimed domain.” […]

However, this does not change the fact that in each particular case the skilled person has to determine the suitability of the components for compositions according to the invention by trial and error, by determining the energy input needed for and the fineness-of-grind after dispersing in water. Therefore, this argument is not in conflict with the conclusions drawn under point [3.2].

[3.4] Consequently grounds under A 100(b) make it impossible to maintain the patent according to the main request, which corresponds to the patent as granted.

NB: In the headnote, the Board accepts to generalize a bit: “If the claims require that a certain target is reached (in the present case, that a parameter lies below a certain value) then feasibility (Ausführbarkeit) pursuant A 100(b) EPC is not given if the patent does not provide any hint to the skilled person how he/she can reach this target without unacceptable research efforts outside the exemplary embodiments.”

To download the whole decision (in German), you may click here.

NB: This decision is simultaneously reported on Le blog du droit européen.