T 0739/05 (Fuel oil/INFINEUM) 03-11-2005

1. Point of law

The issue to be dealt with in this appeal is whether or not the claimed subject-matter complies with the requirements of the second sentence of Article 76(1) EPC which stipulates that a divisional application "may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed". In accordance with the established jurisprudence of the Boards of Appeal, the relevant question to be decided is, therefore, whether or not a skilled person would directly and unambiguously derive from the parent application the technical information contained in the divisional application.

2. Main Request

2.1 The parent application contains a set of 11 claims directed in Claim 1 to a composition comprising a fuel oil, a lubricity enhancer and at least one ethylene-unsaturated ester copolymer and preferred embodiments of that composition according to Claims 2 to 8, inter alia, those having in accordance with Claim 2 a lubricity such as to give a wear scar diameter, as measured by the HFRR test at 60ºC of at most 500 µm, in Claims 9 and 10 to a process for preparing the composition of Claims 2 to 7 and in Claim 11 the use of the at least one ethylene-unsaturated ester copolymer to enhance the lubricity of a fuel oil composition (page 2, line 22 to page 3, line 22). The independent Claims 9 and 11 of the parent application read:

"9. A process for the manufacture of the composition of any one of claims 2 to 7, which comprises refining a crude oil to produce a petroleum-based fuel oil of low sulphur content, and blending with this refined product a lubricity enhancer and at least one ethylene-unsaturated ester copolymer and optionally a vegetable-based fuel oil, to provide a composition with a sulphur content of at most 0.2% by weight and having a lubricity such as to give a wear scar diameter, as measured by the HFRR test at 60ºC, of at most 500 µm.

11. The use of at least one ethylene-unsaturated ester copolymer to enhance the lubricity of a fuel oil composition having a sulphur content of at most 0.2% by weight and also comprising a lubricity enhancer."

2.2 It is apparent from a comparison that the independent process Claim 16 of Set A-1 which corresponds to Claim 19 of the set considered by the Examining Division (points II and VII above) differs from process Claim 9 of the parent application in that the lubricity enhancer comprises one or more carboxylic acids containing from 2 to 50 carbon atoms and in that the sulphur content of the composition produced is at most 0.05% by weight instead of 0.2% by weight.

The latter difference is derivable from Claim 3 of the parent application relating to a preferred embodiment of the composition of Claim 1 where the sulphur content is at most 0.05% by weight.

Thus, it remains to be assessed whether the specific lubricity enhancer has been originally disclosed as a particular embodiment of the invention.

The Examining Division was of the opinion that carboxylic acids were only casually mentioned on page 9, lines 6 to 10 of the parent application as non-preferred alternative but not in combination with the specific range containing from 2 to 50 carbon atoms. It was rather disclosed in this paragraph on page 9 that the acids were "of the types described above in relation to the ester lubricity enhancers" of which a variety was actually disclosed, so that a new embodiment was created by first selecting the carboxylic acid lubricants and secondly selecting those having 2 to 50 carbon atoms.

The Board agrees insofar as the parent application mentions a variety of conventional types of lubricants including esters in which the acid moiety contains between 2 to 50 carbon atoms, and alcohols and acids having from 6 to 30 carbon atoms (page 1, line 33 to page 2, line 11) from which the ester lubricants are preferred, especially those of a polyhydric alcohol and a carboxylic acid and "in particular an ester of an acid moiety which contains from 2 to 50 carbon atoms", such as esters from dicarboxylic acid having between 9, especially 12, and 42 carbon atoms (page 6, lines 24 to 34 and Claims 6 to 8).

No broader class of carboxylic acids has been disclosed in the parent application than that containing between 2 and 50 carbon atoms which covers subclasses containing 6 to 30, 9 to 42 and 12 to 42 carbon atoms.

The Board, therefore, considers that no selection was made as far as the chain length of the carboxylic acids is concerned since the parent application discloses no other carboxylic acids to which the reference on page 9 (lines 6 to 8) might relate than those having between 2 and 50 carbon atoms.

Consequently, the only choice made with respect to the disclosure of the parent application is that the carboxylic acids mentioned on page 9 (lines 6 to 10) are selected from a group comprising several lubricity enhancers.

Considering that the disclosure of a patent document is not restricted to the preferred embodiments and since the information on page 9 concerning the carboxylic acid lubricants is not limited with respect to the other features of the process disclosed in the parent application, in particular the kind of fuel oil, the level of sulphur content or the wear scar diameter, the Board concludes that the subject-matter of independent process claim 16 derives its basis directly and unambiguously from the parent application.

2.3 The same applies to the other independent claims for the following reasons:

Independent Claim 1 correctly defines the product of the process of Claim 16 and corresponds, therefore, to an allowable limitation of the composition of Claims 1 or 2 of the parent application.

Independent Claim 17 derives its basis from the same selection of carboxylic acid lubricity enhancers as Claim 16 in combination with Claim 11 of the parent application relating to the use of at least one ethylene-unsaturated ester copolymer to enhance the lubricity of fuel oil composition comprising a lubricity enhancer, from the pointer in Claim 9 of the parent application to a preference for petroleum-based fuel oil and from the pointer in Claim 3 of the parent application to a maximum sulphur content of 0.05% by weight.

Independent Claim 18 relating to the use of a combination of at least one ethylene unsaturated ester copolymer and a lubricity enhancer to enhance the lubricity of a petroleum-based fuel oil composition is based on the same disclosure of the parent application as Claim 17 in combination with page 9, lines 16 to 18 according to which the ethylene-unsaturated ester copolymer(s) and the lubricity enhancer may be incorporated in the fuel oil either separately or preferably in combination.

2.4 The Examining Division also found that the dependent claims were inadmissible under Article 76(1) EPC not only for the same reasons as the independent claims but also since they contained further selections or combinations not disclosed in the parent application.

The Board does not agree since the subject-matter of the dependent claims either corresponds to that of dependent claims in the parent application or is derived from the description of particularly preferred embodiments which are, however, not disclosed only in combination with specific lubricity additives.

Therefore, each of the dependent claims finds a specific pointer in the parent application, namely

- Claims 2 and 3: in Claims 4 and 5 to which they correspond;

- Claims 4 to 6: in the passage on page 5, line 34 to page 6, line 7, disclosing that the copolymer is advantageously ethylene-vinyl ester copolymer, preferably an ethylene-vinyl acetate, propionate, hexanoate or octanoate copolymer and has preferably a number average molecular weight of 1,000 to 5,000 as measured by vapour phase osmometry;

- Claim 7: on page 6, line 30 where polycarboxylic acid is pointed out as being advantageous;

- Claim 8: in the passage on page 9, lines 8 to 9, disclosing that the acids in the case of mono-carboxylic acids are saturated;

- Claims 9 and 10: in the passage on page 9, lines 6 to 8, in combination with that on page 6, lines 24 to 28, disclosing that more than one lubricity enhancer may be present and that the esters of a carboxylic acid having 2 to 50 carbon atoms may be used in combination with those acids;

- Claim 11: in the passage on page 9, line 20 in combination with page 16, line 26, indicating the addition of two or more co-additives;

- Claim 12: on page 9, line 26 to page 15, line 22, where all the different classes of co-additives referred to in the claim are mentioned;

- Claim 13: in process Claim 9 in combination with the passage on page 2, line 32, indicating that the fuel oil may be a mixture of petroleum- and vegetable-based fuel oil;

- Claim 14: on page 5, line 7, where rapeseed methyl ester is determined to be the most preferred vegetable-based fuel oil; and

- Claim 15: on page 1, line 4, indicating that the invention relates to additives for improving the characteristics especially of diesel fuel and kerosene.

2.5 For the reasons set out above and considering that the description of the divisional and parent application is the same, the Board comes to the conclusion that the present divisional application does not extend beyond the content of the parent application.

3. Requirements of Article 123(2) EPC

Insofar as amendments in the divisional application subsequent to its filing are concerned, the amended application has to comply with the requirements of Article 123(2) EPC. However, as the amendments made to the new claims are directly and unambiguously derivable from the description and the claims of the divisional application as originally filed (see above points II and VII in combination with point 2 insofar as the description is concerned which is identical with that of the parent application), no objections arise under the provisions of Article 123(2) EPC.

4. Since the claims as amended in Set A-1 (main request) do not violate either Article 76(1) EPC or Article 123(2) EPC, there is no reason to consider the auxiliary requests in this respect.

5. Remittal to the first instance

The application in suit was refused solely on the ground of Article 76(1) EPC for extension beyond the content of the parent application. Whether the application meets the other requirements of the EPC has not yet been established. Since it is the function of appeal proceedings to give a judicial decision upon the correctness of a separate earlier decision taken by a first-instance department (see Case Law of the Boards of Appeal of the European Patent Office, 4th ed. 2001, VII.D.2), the Board finds it appropriate to make use of its power under Article 111(1) EPC and remits the case to the first instance for further prosecution.

The Board takes the opportunity to draw the first

instance's attention to the fact that minor clerical errors, such as the omission of the word "formula" in Claim 3, the term "hexonoate" in Claim 5 or the punctuation in Claim 12, already present in the claims as originally filed have been maintained in the version of Set A-1.

6. Procedural issues

The Board sees no reason to suspend the further prosecution and the final decision of this case until a decision of the Enlarged Board of Appeal in case G 1/05 is issued even though the important point of law raised by the underlying referral T 39/03 (i.e. whether a divisional application as filed not meeting the requirements of Article 76(1) EPC can still be amended in the course of the examination procedure in order to meet these requirements) may be of importance for the case under consideration.

But apart from the fact that the Appellant has applied for accelerated prosecution of the appeal proceedings, the Board is of the opinion that the decision of the Enlarged Board of Appeal cannot affect the outcome of this appeal in a manner contrary to the decision now made by this Board of Appeal.

Because even if the Enlarged Board of Appeal should decide that a divisional application at its filing date offending against the provisions of Article 76(1) EPC relative to its subject-matter cannot be amended during the further examination procedure, the principle of the protection of legitimate expectations on pending cases is applicable. According to this principle, in cases where existing long-standing practice laid down in publications of the European Patent Office is being overruled by a new decision (i.e. of the Enlarged Board of Appeal), consistent case law (see G 5/93 OJ EPO 1994, 447; G 9/93 OJ EPO 1994, 891; T 905/90 OJ EPO 1994, 306; J 27/94 OJ EPO 1995, 831; J 25/95 not published) allows the applicants of pending cases a transitional period during which they may rely on the previous practice until the modifying decision is made available to the public.

In its decision T 39/03 underlying the referral, the Board of Appeal itself emphasises (see reasons for the decision point 3.1) that it "is well aware of the fact that in cases where, .... , a divisional application as filed offends against the provision of Article 76(1) EPC relative to its subject-matter, it is the established practice of the European Patent Office to allow an applicant at any later stage of the examining procedure to amend the divisional application so that it meets the requirements of Article 76(1) EPC" and that the Guidelines for Examination in the European Patent Office imply that a divisional application not meeting the requirements of Article 76(1) EPC in its version as filed may be corrected in this respect at any later stage of the examination procedure.

Thus taking into consideration that the application in suit was filed on 7 February 2000 (as a European divisional application to the earlier European application No. 95 942 211.4), that on 11 August 2005 the Applicant/Appellant was summoned to oral proceedings before this Board of Appeal and that the decision T 39/03 was issued on 26 August 2005, the Board is of the opinion that the principle of legitimate expectations allows the Appellant in the case under consideration to rely on the established practice of the European Patent Office as published in the Guidelines for Examination in the European Patent Office.

In consequence, suspending the present appeal proceedings until the decision of the Enlarged Board of Appeal in case G 1/05 is issued is held to be inappropriate.