3.2.4 Public prior use

T 1833/14 dealt with the condition of reproducibility laid down in G 1/92 (OJ EPO 1993, 277). It could not be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. In order to be part of the prior art pursuant to Art. 54(2) EPC, a public prior use must amount to an enabling disclosure (T 977/93, OJ EPO 2001, 84; T 370/02, T 2045/09, T 23/11 and T 301/94). It is generally known in the field of polymers that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer. In the polymer field, in which products and compositions are often defined by means of parameters, the requirement of sufficiency of disclosure is analysed with particular care and the same criteria must apply to the reproducibility without undue burden of a product on the market. In order for the product to be state of the art, the question was whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1). This was however not shown by the appellant (opponent). On the contrary, the appellant stated that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".

In T 1409/16 the invention was a laundry composition. The appellant (opponent) alleged that the claimed composition lacked novelty inter alia because of the commercially available CMC product "Finnfix® BDA" used in the examples of documents D1 to D3. By fractionation of said Finnfix® BDA, the appellant had obtained a fraction F1 and it went on to argue that since claim 1 was formulated in an open manner ("comprising"), all the compositions of D1 to D3 containing Finnfix® BDA also comprised said fraction F1 and were, thus, novelty-destroying for the subject-matter of claim 1. The respondent (patent proprietor) alleged that the fact that Finnfix® BDA could be fractionated to obtain an artificially distributed sample of CMC falling within the ambit of claim 1 did not mean that such information had been made available to the public. The board regarded the fractionation of Finnfix® BDA as carried out by the appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92, OJ EPO 1993, 277) property of the Finnfix® BDA. However, information revealed by following this procedure did not correspond to what could be considered to have been made available to the public by an analysis of the chemical composition of Finnfix® BDA within the meaning of G 1/92. Hence, the board concluded that none of D1 to D3 made available to the public a composition according to claim 1 as granted. See also chapter II.A.1. "Interpretation of ambiguous terms or confirmation of the text of a claim".